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Chapter 4 Fixation: Purpose of the Fixation Requirement, Tangible Medium of

Expression, More than One Work May Be Fixed in the Same Copy, Sufficiently Stable
Form: Fixation and Digital Works, By or Under Authority of the Author, Fixation and
Transmissions, The Anti-bootlegging Provision.

Examples
1. At what point in time? In 2006, Concord creates a
novella, Lanes and Games. She spends several days
working out most of the details in her head and then
writes it all down over several days. She
subsequently types the words into her computer and
e-mails them to her publisher. The publisher soon
prints 1,000 copies of the book (with a copyright
notice, 2006 Concord, on each) and delivers
them to various bookstores. The books are put on
display, and most are sold over the next few months.
Meanwhile, just after the book is published, Concord
registers the book with the Copyright Office. She
downloads the form and mails it in with the fee.
Soon, she receives a certificate of registration.
At what point does Concord have a copyright in the
novella? What if all the events had occurred in 1966?
2. Making a record. Concord has an idea for another
novella. Over several days, she devises an intricate
plot and peoples the story with some complex
characters. She does not have time to sit down and
write out the story. Rather, she simply writes the title
of the novella, Worm Tunnel, on a postcard and mails
the postcard to herself. Does she have a federal
copyright in the story? What if she had carried a tape
recorder and dictated the story as she thought it up?
3. Improvable. Nick and Tony are improvisational
comedians. During their act, they take suggestions
from audience members and improvise skits. They
learn that local stand-up comedians have copied

some of their acts. Can they get copyright protection


without resorting to a scripted act?
4. Lost symphony. Sergei composes a symphony,
working alone in his Alas kan bush cabin. As soon as
he finishes, he bundles up the manuscript and jumps
in his floatplane, never to be seen again. Several
years later, the manuscript floats ashore in Seattle.
Local musicians learn of the find and decide to
perform the symphony. Just to be sure, they check the
Copyright Office records to make sure that Sergei did
not register the copyright before his untimely end. Is
the symphony uncopyrighted?
5. Unfixed? Author writes a story and reads it in public.
She then inadvertently destroys the only copy of the
story. Moviemaker was at the reading, loved the
story, and has a tremendous memory. He would like
to copy the story into a script without Author's
consent. Does Author lose copyright because her
work is no longer fixed?
6. Lightning in a bottle. Georgia choreographs a ballet
retelling the fable of the tortoise and the hare.
Georgia does not care to write the choreography
down in annotations or record it in verbal form.
Rather, she guides the dancers through the piece bit
by bit. At the dress rehearsal, a photographer takes
dozens of photos of the performance. Georgia had
given permission for the photos to be taken. Does
Georgia have a copyright in the dance?
7. Ever-changing? Kelly plants and tends a permanent
Wild Flower Floral Display. The bed has aesthetic
appeal, partly from how the flowers change with the
season. Is the work copyrighted?
8. Virtual yet tangible. Firesabre terraforms islands
in the virtual world Second Life. Is Firesabre's work
fixed in a tangible medium even though it's in a
virtual world? Fixed under the Copyright Act
requires only that the work be sufficiently permanent

or stable to permit it to be perceived, reproduced, or


otherwise communicated for a period of more than
transitory duration. As long as Firesabre's work has
a little creativity, it can be a copyrighted work.
FireSabre Consulting LLC v. Sheehy, 2013 U.S.
Dist. LEXIS 139550 (S.D.N.Y. Sept. 26, 2013).

Explanations
1. Concord has a copyright in the novella when she
fixes it in a tangible medium of expression. She did
this when she wrote the novella. None of the
subsequent actions (putting it in a computer, printing
and publishing copies with a copyright notice) were
necessary to receive protection under the current
version of the statute.
If all this had occurred in 1966, the answer would
be different. Until 1978, federal copyright applied
primarily to published works. Copyright would not
attach until the work was published with a copyright
notice (for some works, copyright could be secured
by registration). Had it been published without a
copyright notice, Concord would have lost her
copyright and the work would be in the public
domain, free for anyone else to copy.
2. Concord has a copyright in the story when she fixes it
in a tangible medium of expression. She has not done
this, so she has no copyright. Writing the title alone
does not fix the entire work. If, however, she dictated
the story into a tape recorder, that would fix it in
tangible form and she would have a copyright.
3. Nick and Tony do not need to use a script to have
copyright protection. Rather, they could record their
act as they improvise it. That would fix it in tangible
form, and they would then have copyright in the
work. Having said that, comedians reportedly rely
less on copyright than on informal norms to reduce
free-riding. See Dotan Oliar and Chris Sprigman, The

Emergence of Intellectual Property Norms in StandUp Comedy, Va. L. Rev. (2008).


4. Sergei had a copyright in the musical work when he
fixed it in tangible form by writing it down in
manuscript form. The manuscript may be lost, but that
does not affect the intangible right in the copyright.
He did not register the copyright, but that is not
necessary to have copyright protection. The local
musicians could potentially infringe the copyright by
a public performance of the symphony. They would
be well advised to seek permission from Sergei's
heirs.
5. Once fixed, the work is protected by copyright. The
statute does not require that the work remain fixed.
See Peter Pan Fabrics v. Rosstex Fabrics, 733 F.
Supp. 174 (S.D.N.Y. 1990) (rejecting even the
possibility of such an argument). Author still has her
copyright, but proving infringement might be very
difficult. To prove infringement, Author must show
copying of original, creative expression. It might be
difficult without a copy of the story to show which
elements were copied. Moreover, as later chapters
discuss, Author must register the work to bring an
infringement action (assuming Author is a U.S.
author). To register the work, Author must deposit a
copy of the work. As discussed later in the book,
courts have held that a reconstruction from memory
may not be used to satisfy the deposit requirement.
6. The photographs may be sufficient to fix the
choreographic work in a tangible form. The question
would be whether the choreographic work, the
composition and arrangement of dance movements
and patterns, could be perceived, reproduced, or
otherwise communicated through the series of still
photographs. As one court aptly described, still
images might well suffice to capture choreography:
A snapshot of a single moment in a dance sequence may

communicate a great deal. It may, for example, capture a gesture,


the composition of dancers' bodies or the placement of dancers on
the stage. Such freezing of a choreographic moment is shown in a
number of the photographs in the Switzer book, e.g., at pp. 30, 38,
42, 66-67, 68, 69, 74, 75, 78, 80, and 81. A photograph may also
convey to the viewer's imagination the moments before and after
the split second recorded. On page 76-77 of the Switzer book, for
example, there is a two-page photograph of the Sugar Canes,
one of the troupes that perform in The Nutcracker. In this
photograph, the Sugar Canes are a foot or more off the ground,
holding large hoops above their heads. One member of the
ensemble is jumping through a hoop, which is held extended in
front of the dancer. The dancer's legs are thrust forward, parallel
to the stage and several feet off the ground. The viewer
understands instinctively, based simply on the laws of gravity, that
the Sugar Canes jumped up from the floor only a moment earlier,
and came down shortly after the photographed moment.

Horgan v. MacMillan, Inc., 789 F.2d 157, 163 (2d


Cir. 1986) (discussing a similar issue, whether a
series of photos in a book, Ellen Switzer's The
Nutcracker: A Story and a Ballet, could infringe
the copyright in a choreographic work, George
Ballanchine's choreography for the ballet The
Nutcracker).
7. The court, faintly echoing Chauncey Gardiner, held
that the work was neither a work of human authorship
nor fixed in tangible form: A garden's constituent
elements are alive and inherently changeable, not
fixed. Most of what we see and experience in a
gardenthe colors, shapes, textures, and scents of
the plantsoriginates in nature, not in the mind of the
gardener. At any given moment in time, a garden
owes most of its form and appearance to natural
forces, though the gardener who plants and tends it
obviously assists. Kelley v. Chicago Park District,
635 F.3d 290 (7th Cir. 2011).
8. Fixed under the Copyright Act requires only that
the work be sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory
duration. The work was fixed in computer storage

somewhere, even if it portrayed something in a


virtual world. As long as Firesabre's work has a
little creativity, it can be a copyrighted work.
FireSabre Consulting LLC v. Sheehy, 2013 U.S.
Dist. LEXIS 139550 (S.D.N.Y. Sept. 26, 2013).

Example
1. Philosophical differences. Thelma and Louise, two
folk singers, write the song Drumlin Farm by
improvising both tune and words while playing their
guitars. When satisfied, they make an audiotape of
themselves performing the song. After happily
listening to it, they decide to read up on copyright
law to figure out their rights. Soon, they are a little
confuseddo they have a musical work? A sound
recording? And is the tape a copy or a phonorecord?

Explanation

1. The authors have two copyrights: a copyright in the


musical work Drumlin Farm, and a copyright in the
sound recording of them singing the song. The tape is
a phonorecord of both the musical work and the
sound recording.

Examples
1. Rats. The musical Rats is greatly successful. The
musical has a number of memorable characters
drawn from a children's book about rats living under
a restaurant. The musical has several popular songs
and lots of funny banter. The Broadway production
features creative makeup designs on the actors' faces.
Part of the attraction is that Producer bans the
publication of photos of the made-up actorsonly
those attending live performances see the makeup
designs. Tabloid Photographer takes unauthorized
photos of the actors by sneaking backstage. When
Producer seeks an injunction against publication of
the photos, Photographer argues that the makeup

designs are not fixed and therefore are unprotected.


Are the designs painted on the actors' faces
sufficiently fixed to attain copyright protection?
2. Double Rats. Suppose that none of the songs and
dialogue in Rats had ever been recorded or written
down. Rather, they had all been improvised over
time. Another production of the musical starts up.
Producer argues that the musical is fixed because the
characters' makeup designs are painted on the actors'
faces. Does that suffice?
3. Screen display. Omni creates a successful video
game called Scramble. Omni sells the game in game
cartridges. When a cartridge is put in a game console,
on-screen cartoon characters perform various
actions, subject to some control by the player.
Competitor creates a strikingly similar game. Sued
for copyright infringement, Competitor argues that
Scramble is not copyrightable because it is not fixed
but appears only in fleeting images on the screen. Is
Scramble fixed?
4. A room of her own. Sitting thoughtfully through her
payment systems class, Virginia decides to write a
poem about the challenges of Reg. CC. She types the
poem into her laptop over the course of an hour. The
poem's wordplay and vivid imagery easily meet the
minimal creativity requirement for copyright. Does
she have a federal copyright in the poem? How can
she ensure that she does?

Explanations
1. Copyright protection does not require the actor to
wear the makeup permanently. Rather, fixation must
be sufficiently permanent or stable to permit it to be
perceived, reproduced, or otherwise communicated
for a period of more than transitory duration. 17
U.S.C. 101. The makeup on the actor's face is
sufficiently stable to meet the fixation requirement.

Cf. Carell v. Shubert Org., 104 F. Supp. 2d 236


(S.D.N.Y. 2000).
2. Painting the actors' faces does fix the makeup
designs. It does not fix the entire musical, which is a
musical work (as well as a literary and a dramatic
work). Fixation must embody the work in a tangible
medium of expression, such that it may be
perceived, reproduced, or otherwise
communicated. Simply showing the makeup designs
on the actors' faces does not communicate the entire
musical. Rather, Producer would have to write it
down, videotape it, or otherwise fix the entire work.
Once Producer did so, however, he could then
exercise his exclusive rights and prevent the other
production from publicly performing the work. Even
if the other production fixed the work first, the other
producers would have no copyright, because the
musical was not original to them.
3. Scramble is fixed in the game cartridges, which are
clearly sufficiently stable. Although the game is
viewed on the screen, fixation can be in any form.
Likewise, a musical work may be fixed on a CD even
if it is usually experienced only in the fleeting sounds
from the speakers. The game is fixed even if the
player can affect particular performances of the
game. See Stern Electronics v. Kaufman, 669 F.2d
852 (2d Cir. 1982). Many types of works are affected
by choices of the audience.
If the work did appear only on the screen, it
probably would not qualify as fixed. Such a copy is
not permanent or stable. The weight of authority now
seems to be that temporary copies in computer
memory are sufficiently stable, even though they are
constantly renewed. A screen display is also
refreshed many times a second (although not as
frequently as memory), but the overall duration is
much more fleeting than the temporary memory copy.

The screen display changes in less than a second,


while the memory copy sits there much longer.
4. As Virginia types her poem into her laptop computer,
it is saved in the temporary working memory of the
computer. Although the issue is unsettled, the trend of
authority is that this is probably sufficiently
permanent to qualify as fixing a copy of the poem and
therefore giving her copyright protection. If she wants
to be sure, she can simply save the poem in a file in a
more permanent form (such as simply saving it on her
hard drive, a network drive, or an external memory
device). She will probably do this anyway if she
wants to save the text for future use (and of course
her computer may do this automatically for various
reasons, such as making a backup).

Examples
1. Dance. Choreographer works over several weeks to
create an intricate dance. She then spends hours
rehearsing the dance with her troupe. She does not
write down the choreography, but rather remembers it
and teaches it face-to-face to the dancers. They
perform the dance to a large and appreciative
audience. Choreographer then learns that another
troupe surreptitiously recorded the performance and
plans to perform it. Does she have a copyright in the
choreography of the dance?
2. Fixed? Author prepares a lecture on literary theory,
which sets forth her views in witty and incisive
fashion. She does not write her remarks down. She
delivers the lecture to an audience of two people.
Author uses a tape recorder to record the lecture. Has
she fixed an original work of authorship? Would it
make a difference if the recording was never
published or even played again?
3. Authorized by author? Poet composes a poem in his
mind. He recites it privately to several friends, not

realizing that one friend is videotaping the


performance. When he is later informed of the taping,
Poet says, That's okay. You did me a favor by fixing
it. Now I have copyright in the poem. Is he right?
4. Unplugged. Scribbler appears at a book signing to
plug his latest collection of short stories. Before
sitting down to sign copies of the book, he reads one
story from the book aloud to the assembled throng.
The store offers to tape the reading, but he declines.
One audience member tape-records the reading
without permission and sells copies to the public,
advertising in various literary journals. Accused of
copyright infringement, the entrepreneur argues that
she tape-recorded an unfixed work (the reading) and
cannot be infringing. Will that argument succeed?

Explanations

1. Choreographer does not have a federal copyright in


the dance. Until the work is fixed under her authority,
it is not protected by federal copyright. If a speaker
gives a speech, or a songwriter creates a song, or a
choreographer makes a dance, all without reducing
the works to any tangible form, the work is
uncopyrighted. Anyone else who sells copies of the
speech, or sings the song in concert, or performs the
dance publicly is not infringing copyright. The
fixation requirement is not difficult to meet: The
speaker could simply write the speech down or
record it; the songwriter could put the music in sheet
music form or use a tape recorder; the choreographer
could make notations about or videotape or
photograph the dance. Once the work is fixed,
copyright protection attaches. Anyone who
subsequently made copies (or did other things within
the exclusive rights of the copyright holder) would be
potentially infringing.
Her choreography is an original work of

authorship, but it has not been fixed by or under the


authority of the author. Even though she and her
troupe have committed it to memory and performed it
in public, copyright does not attach without
authorized fixation. The other troupe did videotape
the dance, but that would have met the fixation
requirement only if it had been authorized.
Choreographer is not out of luck. She can still fix
the work (in notation, videotape, or any other
tangible form), thereby receiving copyright
protection. As later chapters discuss, the other troupe
would be liable if it subsequently made copies or
performed the work publicly (although it can keep the
videotaped copy it made before protection attached).
2. Yes. By tape-recording the lecture, Author fixed a
literary work. Fixation need take no particular form,
so she need not transcribe the lecture or put it on
paper in any way. The size of the audience is
irrelevant. If she had simply tape-recorded the
lecture with no one else present, it would have been
fixed.
Copyright no longer turns on publication, so
whether a work is published or used in any other way
does not affect whether it receives copyright
protection. So if Author never publishes the
recording, never plays it again, or promptly loses it,
she is still entitled to copyright protection (although
any of those would make it harder to prove
infringement, which, as discussed in subsequent
chapters, requires proof that defendant copied from
the protected work).
3. The videotaping was initially unauthorized and hence
did not fix the poem. Poet is seeking to subsequently
ratify the fixation, thereby retroactively authorizing it.
This argument seems to lack support in the statute.
Poet would be well advised to simply write the poem
down or otherwise fix it himself (or authorize

someone to do so).
4. The short story was fixed in tangible form when
Scribbler wrote it. (It is also being sold in fixed form
in the books.) Upon fixation, Scribbler had a
copyright in the story. Audience member is making
copies (and distributing them to the public, which
also falls within the copyright holder's exclusive
rights) and therefore is infringing.
Live musical performances receive special protection,
even if the performance is not fixed under the authority of
the author. The statute imposes liability for anyone who
makes an
unauthorized recording or transmission of a live musical
performance or who thereafter distributes recordings. 17
U.S.C. 1101.
The anti-bootlegging provisions give protection
to works that have not been fixed in a tangible form. It may
give protection to works that do not qualify as Writings.
Second, there is no period of protection specified in the
anti-bootlegging provision, such as life plus 70 years for
works of individual authors. The anti-bootlegging
provision may also fail to give exclusive rights for
limited Times. Last, it is not limited to protection of
original works; rather, by its terms, it applies to all live
musical performances.

Examples
1. Intercepted. Butkus, a stand-up comedian, performs
several times a week at various comedy clubs. His
present act is a rambling account of his trip to Tibet
and is filled with anecdotes and topical jokes. He has
gradually honed the act over the past several months,
and it is indelibly inscribed in his memory. Killing
some idle time between performances, he googles his

name. Much to his surprise, he finds that recordings


of his recent show at the Kibble Kat Lounge are
being auctioned on eBay. Can he take advantage of
the anti-bootlegging provisions in the Copyright Act?
2. Unprotected? The Weekly Gig, popular trade paper
for musicians, reports that a federal district court has
struck down the anti-bootlegging provision of the
Copyright Act on the grounds that it is
unconstitutional. First, it goes beyond protecting
Writings, because it protects unfixed works.
Second, it goes beyond giving rights for limited
Times, because it has no specific period of
protection. Copyright holders are aghast. If other
courts follow the ruling, will concertgoers be free to
record performances and sell the recordings?

Explanations

1. Unfortunately for Butkus, the anti-bootlegging


provisions apply only to live musical performances.
His comedy routine would not qualify. If he wants
protection, he should fix his act in some way (e.g.,
write it down or record it).
2. Even if the anti-bootlegging provisions are held
unconstitutional, that may not be too terrible for
musicians. There would still be copyright protection
in the musical works, so people who record concerts
would be potentially infringing unless the songs were
in the public domain.
Chapter 5 Idea not subject to copyright

Examples
1. Staking a claim. Nancy has a terrific idea for a
children's book, Heart's Bend (the idea involves
twins, salamanders, and pumping out a basement).
She is concerned, first, that someone might copy her
idea, and second, that someone might come up with a
similar idea. Can she use copyright to protect her

intellectual progeny?
2. Suggestions. A New Yorker cartoon shows a box
with two slots, fixed on an office wall. The sign on
the box reads, Suggestions. Or toast. Esi, a
designer at Wacky Products, sees the cartoon and
uses it as the basis for a new novelty product: a
toaster with Suggestion Box imprinted on the side.
The toaster becomes a highly popular holiday gift that
year. The cartoonist claims copyright infringement.
Has Wacky Products infringed the copyright in the
cartoon?
3. Famillionaire. The Apprentice is a reality
television show. Each week, a team of aspiring
businesspeople attempts an assigned business task,
like marketing a new airline. The tasks are designed
to test skills important in succeeding as
entrepreneurs. Donald Trump, a quirky wealthy
businessman, evaluates the team members. Some
team members are summarily fired each week, until
finally the remaining contestant is the winner. The
show is highly successful.
Imitation being the sincerest form of flattery,
another network soon airs The Rebel Billionaire. In
this show, team members attempt assigned tasks, like
walking a tightrope between two hot air balloons.
The tasks are designed to test such qualities as risk
taking and coolness under fire, qualities important for
entrepreneurs. Richard Branson, a quirky wealthy
businessman, evaluates the team members. Some
team members are gently fired each week, until
finally the remaining contestant is the winner. Does
Rebel Billionaire infringe the copyright in The
Apprentice?
4. Ratz. Mattel, the maker of Barbie dolls, develops an
idea to follow up with a contrasting line of dolls
young and stylish, with exaggerated features, big
heads, and attitude. A competitor learns the idea and

markets Bratz dolls, with wild commercial success.


Copyright infringement?
5. An example from the Copyright Office. A toy
manufacturer conceives a novel idea for a toy
consisting of multicolored geometrical spheres,
cubes, and cylinders of varying sizes. All of these
parts or pieces are magnetized, and will adhere to
one another when placed in close proximity. It is
possible to construct an indefinite variety of shapes
and figures by means of the magnetized parts or
pieces. The manufacturer desires to protect the
threedimensional
aspects of the toy before publication
occurs. He applies to the Copyright Office for
registration of a design for an unpublished sculptural
work of art. His application Form VA is accompanied
by one complete set of magnetized spheres, cubes,
and cylinders arranged in a plain box according to
size and color. Was his toy copyrightable?

Explanations

1. No. Copyright protection does not extend to ideas.


102(b). Even if she writes the book, registers the
copyright, and puts 2006 Nancy on the copyright
page (along with All Rights Reserved and No
Stealing My Ideas), copyright does not apply to
ideas.
She may use contract law to get limited protection.
She could have prospective publishers sign a
nondisclosure agreement (they'll rarely agree). She
could have readers sign nondisclosure agreements
(hard to sell many books with conditions like that,
though). But those contracts do not bind the rest of the
world the way that copyright grants exclusive rights.
Does this mean that coming up with good ideas for
books is a waste of time? No. She can still write the
book and have copyright protection in her particular

expression of the idea. Moreover, commercial


success (let alone artistic fulfillment, achievement,
and recognition) does not depend on legal protection.
Many aspects of commercially successful products
are not protected. Anyone can write a book about
schools for wizards, but Harry Potter still does quite
well.
2. Wacky has not infringed the copyright in the cartoon.
Wacky copied the basic idea of the cartoon: that a
suggestion box might double as a toaster, implying
that suggestions will be flamed. But Wacky did not
copy the expression of the idea. Rather, Wacky
expressed the idea in quite a different way.
3. Rebel Billionaire did not infringe the copyright in
The Apprentice. Rather, it copied the unprotectable
idea of a reality show in which contestants perform
tasks assigned by a quirky rich person. Rebel
Billionaire also copied some elements more
specifically, such as eliminating contestants each
week, but those elements would likely be unprotected
as well, because they are necessary to implement the
unprotected idea. If the second show had copied not
just the idea but also more specific elements, such as
scripted scenes or the specific tasks that were
performed, the result might be different.
4. No copyright infringement. An idea for a line of dolls
is not protected by copyright. See Mattel Inc. v. MGA
Entertainment Inc., 616 F.3d 904 (9th Cir. 2010).
5. The toy was not copyrightable: We will refuse a
registration in Class VA based solely upon the
unassembled toy, even though its component parts or
pieces are potentially capable of being arranged in
copyrightable shapes and forms. The general idea of
the toy is uncopyrightable, regardless of its novelty
or uniqueness. Compendium II: Copyright Office
Practices 503.02(b).

Examples
1. Fame. Harvey's photograph Leg Warmers shows
the legs of a ballerina, from the knees down, in the
classic fifth position: feet touching, one foot in front,
heel to toe and toe to heel. The dancer wears torn
leg warmers, stockings, and ballet shoes. Harvey has
licensed the evocative photo for a number of uses,
including a best-selling gallery art poster. Just as
Harvey is negotiating to license the photo to a major
greeting card publisher, another publisher comes out
with a card featuring a suspiciously similar picture.
Titled Toe Shoes, the new image shows a ballerina
in the fifth position, from just below the knee down,
wearing intact leg warmers, stockings, and ballet
shoes. The photo was taken from a slightly different
angle, the clothing and shoes are different colors, and
the lighting is a little brighterbut the impact on the
viewer is quite similar. The image, showing the feet
turned out, touching each toe to the other heel, the
legs crossing and slightly bent, gives a feeling of
expectancy. The second publisher at first completely
denies copying Harvey's picture, but eventually
admits copying after some clever investigation by
Harvey. Is the second publisher liable for copyright
infringement?
2. Stolen idea. Pixie Studio is in the midst of producing
an animated movie, Pumpkin. The title character is
adopted by a little boy, who finds the orange kitty
sleeping on a warm jack-o-lantern late one
Halloween night. A month before the movie is ready
to open, a rival studio suddenly comes out with
Tango, an animated tale about a boy who finds a stray
kitten one Thanksgiving, sleeping in the boy's furry
boots. Like Pumpkin, the movie has various scenes
of an outdoor cat adapting to indoor life,
encountering various household appliances for the

first time, and learning about the wonders of the food


and water dishes. It turns out that the rival learned
about the basic story line of Pumpkin through
industry gossip. Pixie's executives are livid about the
blatant theft of their intellectual work. Can they sue
for copyright infringement?
3. Zooperman. A cartoonist starts a new comic book
series, Zooperman Comics. She copies a number of
elements from the popular Superman cartoons. Like
Superman, Zooperman is a journalist who hides his
identity beneath everyday clothing but periodically
changes into a special costume and fights crime. Both
costumes are tight-fitting acrobatic suits with flowing
capes. Both cartoons show their heroes crushing guns
in their powerful hands, stopping bullets with their
bodies, ripping open steel doors, and making
building-size leaps in a city. Each is described as the
strongest man in the world who uses his powers to
fight evil and injustice. Each is vulnerable to a rare
substance (kryptonite for Superman, festonium for
Zooperman). Each occasionally retreats to a refuge in
the Arctic for contemplation. The specific depictions
are different in many details. Their capes and
costumes are different colors. One hero catches
bullets; one lets them bounce off him. One leaps over
buildings; one leaps from building to building.
Superman's Arctic refuge is a fortress; Zooperman's
is a whalebone tent. Cartoonist argues that she has
simply copied an idea (the strongest man in the world
who hides his identity whenever he is not fighting
crime). Has she copied only unprotected ideas, or
also protected expression?
4. I'll Fly Away. Freelance Writer spends several
weeks writing a short story, I'll Fly Away, about a
prisoner who seeks solace in music. Serving time for
youthful crimes, the young man writes songs
describing his life and expressing his frustrations and

dreams. He works with other prisoners to develop


his music. Over time, they help each other learn many
other life lessons. The story ends as he reenters the
outside world with the various possibilities in the
balance.
Writer submits the story to Magazine and receives a
polite rejection. A few months later, Magazine
publishes a story attributed to one of its editors. The
basic story line is the same: A prisoner enters prison
as a confused teenager, spends time writing music
and songs, and emerges as a man. Other than the
basic story line, all the elements are different.
Magazine admits that Editor was inspired by
Freelancer's story. Has Magazine copied protected
expression?
5. Wing Tips over the Edge. Photographer creates
Wing Tips over the Edge, a photo taken from the
point of view of a businessperson on the edge of a
roof looking down on a city street. The photo is in a
book distributed to local advertising agencies. An
advertising agency has the photo in mind when it
makes its ad for a financial news service. The
similarities are the point of viewthat of a potential
jumper looking past his shoes, the business attire of
the jumper, and a city street below. The street and
buildings are quite different, and all other details
such as the background, perspective, lighting,
shading, and color of the photographs are dissimilar.
Has the advertising agency copied protected
expression?
6. My corner. Photographer poses a languid woman
with a concertina in a booth of a jazz bar, using the
angles of the roof and wall to create suggestive
geometric shapes. Photographer places the camera
and arranges the lighting very specifically to create a
particular image, paying great attention to the
interplay between the various shapes formed by the

interior of the building, its decor, and the lighting.


The combination of elements creates a pleasing
image for a number of reasonsthe proportions of
the basic elements, the play of the lighting, and the
suggestive air from the slight view into the rest of the
bar. Advertising Agency sees the photo and decides it
captures the mood it seeks to sell a brand of vodka.
Agency poses a chic celebrity with a vodka bottle,
similarly relaxed, in the same booth. Agency takes a
photo, framing the same area of the bar and using the
same lighting and angles, carefully making sure that
every detail from the first photo appears in the
second (apart from replacing the model with the
celebrity and the vodka bottle). Advertising Agency
argues that it has copied only unprotected ideas: the
languid mood of a jazz bar, with its vaguely
suggestive atmosphere. Do you agree?
7. One fine groundhog. The novel One Fine Day is
about a man trapped in a repeating day. The novel
starts with an account of a typical day: He wakes up
to his custom-rigged alarm saying, Wake up, you
lazy bustard; he rides down the elevator with a
redheaded woman; he sees a number of people and
incidents on his way to work, where he has a number
of contentious encounters; he then spends the evening
listening to music and ignoring periodic phone calls.
Before going to sleep, he changes the tape to a
friendlier message. The next morning, however, he
again hears, Wake up, you lazy bustard. He sees the
same woman in the elevator and the same people in
the same places as he goes to work, and the same
incidents occur over the course of the day in exactly
the same way. The next day, everything repeats itself,
with the exception of the changes that the man himself
makes. The day repeats itself numerous times until it
is fixed by a combination of witchcraft and divine
intervention.

The novel serves, without permission, as the basis


for the film Groundhog Day. A self-centered
weatherman becomes trapped in Punx sutawney,
Pennsylvania, on Groundhog Day. He wakes up every
day to the same song from his clock radio, runs into
the same characters on his way to work (the
groundhog's hole), and experiences the same
incidents, except as changed by his actions. The
repeating characters and incidents in the film are
quite different from those in the novel. As the man
realizes the day is endlessly repeating, he uses the
time to better himself in various wayslearning
music, becoming empathetic toward others, and
finally falling in love. The final change breaks the
spell, and he wakes to a new day. Does the script use
unprotected ideas or protected expression?
8. Greetings. SentiMental sells a popular greeting card.
The cover has the message I Miss You, and inside
reads, and you haven't even left yet. There is an
accompanying picture of a boy crying forlornly while
sit ting on a curb next to his dog. Another card
publisher, Rival, copies the card using the same
words and a rather different picture of a weeping boy
sitting on a curb next to his dog. Rival argues that it
has simply copied the unprotected idea and that
finding infringement gives SentiMental a monopoly
over a rather mundane sentimenta boy's doleful
anticipation of the departure of a loved one. Has
Rival copied protected expression or an
unprotectable idea?
9. I missed you. Souvenirs sells a T-shirt to tourists in
San Francisco. The shirt reads, Someone went to
San Francisco and got me this shirt because they love
me very much. The shirt has simple illustrations of
Bay Area staples: the Golden Gate Bridge,
Chinatown, and Fisherman's Wharf. Seeing how
popular the shirt is, another vendor comes out with a

shirt reading, Someone who loves me went to San


Francisco and got me this shirt. The shirt also has
several simple designs: the Golden Gate Bridge,
Chinatown, cable cars, sea lions, and Nob Hill. The
overall arrangement of the elements in the two shirts
is completely different. Did the second vendor copy
protected expression?
10. Jellyfish. Satava, an artist in California, is inspired
one day by the jellyfish in a local aquarium. He sets
to work to make glass-in-glass sculptures of jellyfish.
Soon, he is selling several hundred a year. Another
artist begins making glass-in-glass jellyfish
sculptures. Satava seeks an injunction. He recognizes
that he cannot protect the idea of a jellyfish sculpture
but claims protection in his particular expression of
that idea: vertically oriented, colorful, fanciful
jellyfish with tendril-like tentacles and a rounded
bell encased in an outer layer of rounded clear glass
that is bulbous at the top and tapering toward the
bottom to form roughly a bullet shape, with the
jellyfish portion of the sculpture filling almost the
entire volume of the outer, clear-glass shroud.
Should the court enjoin the copier from making
jellyfish sculptures with those elements?
11. Pi-racy? Erickson's Pi Symphony assigns a musical
note to each digit in pi from zero to nine. Blake
likewise makes What Pi Sounds Like, with different
rhythms and harmonies. Infringement?

Explanations
1. The second publisher is probably not liable. It
copied the idea of a photo of a ballet dancer in the
fifth position. Many of the specific elements would
be the same, but that would be necessary to use the
unprotected idea. Edwards v. Ruffner, 623 F. Supp.
511 (D.N.Y. 1985).
2. Pixie would not be entitled to remedies for copyright

infringement, because the rival has copied only the


unprotected idea of finding a stray kitten on a holiday
together with elements that flow from that idea, such
as various scenes of the outdoor cat adjusting to
indoor life. This would be true regardless of how the
rival learned of the idea, whether through gossip or
even espionage (although the latter could give rise to
liability under other theories, such as
misappropriation of trade secret if the project were
subject to security measures, or breach of contract if
a Pixie employee were involved).
3. Cartoonist has copied protected expression, as well
as unprotected ideas. She is free to copy the idea of a
crime-fighting superstrong man who hides his identity
and secret powers. Some other elements necessarily
follow from the unprotected ideas: He likely would
dispose of bullets fired by criminals and might have
to rip open a few doors to get at them. But there are
many ways that such an idea could be expressed. The
hero need not leap around city buildings, specifically
battle evil and injustice, be vulnerable to a rare
substance, or have an Arctic refuge. All those details
express ideas that could be expressed differently. Cf.
Detective Comics v. Bruns Publications, 111 F.2d
432 (2d Cir. 1940). For example, the superstrong
man could have a vulnerability, but it need not be to
some rare substance.
4. Magazine has copied only unprotected ideas. The
elements copied were very general and represented
only the bare bones of the story: a prisoner coming of
age through working in music. The fact that the story
was submitted directly to Magazine does not affect
its protectability under copyright. Offering
unprotected ideas does not confer copyright
protection to the ideas.
5. The author of the second photo probably did not copy
protected expression. The idea of the first photo is of

a businessperson looking down on the street


contemplating a leap. That idea is not protected by
copyright. There are also a number of quite specific
similarities. In other cases, copying such specific
elements would constitute protected elements. But
here a court likely would hold that the similarities
follow from the ideathe point of view, the business
attire, the city street below. So the second photograph
did not copy protected expression. Cf. Kaplan v.
Stock Market Photo Agency, 133 F. Supp. 2d 317
(S.D.N.Y. 2001). A counterargument is that the idea
is more generalthe idea of a businessperson
contemplating suicide. The view of a city street from
the ledge of a building, including the feet of the
businessperson, is only one way of expressing that
unprotected idea. Under this view, the many specific
elements in the photo are protected expression.
6. The author of the second photograph probably has
copied protected expression. The mood of the first
photo is not protected; nor is the idea of a languid
musician sitting in a jazz bar. So there would have
been no infringement if the second photo captured the
same languorous mood or were set in the corner of
some other jazz bar. But the second photo goes
beyond copying such unprotected ideas. Working
from the first photo, this copyist chose the same
unusual location, framed the photo identically, used
the same lighting and angles, and included other
visual elements such as items of decor. Cf. Kisch v.
Ammirati & Puris, 657 F. Supp. 380 (S.D.N.Y.
1987). The photo necessarily captures many
protected expressive elements from the first photo.
7. Despite the copying of a number of specific elements,
the author of the film probably has copied only
unprotected elementsideas and elements that
necessarily flow from the idea. The general idea is a
man caught in a repeating day. The copied elements

flow closely from that idea. There are a number of


ways that a repeating day could unfold, but the basic
outline likely would involve waking up, going to
work, encountering a number of people, and
experiencing various incidents. The film does not
copy elements that do not flow from the idea, such as
the specific characters and incidents that occur during
the day. Cf. Arden v. Columbia Pictures Indus., 908
F. Supp. 1248 (S.D.N.Y. 1995). A counterargument is
that the copying was more specific than necessary.
The day always has the central character woken up
by an alarm, meeting people on his way to work to
generate comic incidents, and changing the repetition
of action only from the man's intervention. A
repeating day could be portrayed in many other ways,
for example, by losing its repeating character. But
deeming such elements to be protected probably
would give too broad protection to the first work
because it would encompass many variations on the
basic plot idea of a repeating day.
8. This case probably involves copying of protected
expression. Copy right does not protect the idea of
feeling someone's absence before the actual
departureor even the more specific idea of telling
someone that you miss him before he goes. But Rival
copied more specif ically than that. It copied the exact
words: I Miss You and you haven't even left yet,
coupled with a picture of a weeping boy sitting on a
curb by his dog. There are many other ways that a
card maker could have expressed the same ideas. Cf.
Roth Greeting Cards v. United Card Co., 429 F.2d
1970 (9th Cir. 1970).
9. Only unprotected ideas were copied here. As in the
preceding example, the second author copied a
relatively mundane sentiment, coupled with
appropriate images. But the second author did not
literally copy the words of the message. The second

author also did not use the same set of images. In


addition, the various images likely would be treated
as scnes faire. When certain elements are
commonly used in a particular genre, their copying is
not deemed taking of protected expres sion. Icons of
San Francisco on souvenir T-shirts are likely to fall
into that category. Cf. Matthews v. Freedman, 157
F.3d 25 (1st Cir. 1998). This example reflects the
lower scope of protection for works with limited
originality.
10. As the court aptly put it, Satava's glass-in-glass
jellyfish sculptures, though beautiful, combine
several unprotectable ideas and standard elements.
These elements are part of the public domain. They
are the common property of all, and Satava may not
use copyright law to seize them for his exclusive
use. Satava v. Lowry, 323 F.3d 805, 811 (9th Cir.
2003). Satava may not prevent others from copying
aspects of his sculptures resulting from either
jellyfish physiology or from their depiction in the
glass-in-glass medium. Satava may not prevent others
from depicting jellyfish with tendril-like tentacles or
rounded bells, because many jellyfish possess those
body parts. He may not prevent others from depicting
jellyfish in bright colors, because many jellyfish are
brightly colored. He may not prevent others from
depicting jellyfish swimming vertically, because
jellyfish swim vertically in nature and often are
depicted swimming vertically. Satava may not
prevent others from depicting jellyfish within a clear
outer layer of glass, because clear glass is the most
appropriate setting for an aquatic animal. He may not
prevent others from depicting jellyfish almost filling
the entire volume of the outer glass shroud, because
such proportion is standard in glass-in-glass
sculpture. And he may not prevent others from
tapering the shape of their shrouds, because that

shape is standard in glass-in-glass sculpture. Id. at


810-811.
11. In the court's words, Pi is a non-copyrightable fact,
and the transcription of pi to music is a noncopyrightable
idea. The resulting pattern of notes is
an expression that merges with the non-copyrightable
idea of putting pi to music: assigning digits to
musical notes and playing those notes in the sequence
of pi is an idea that can only be expressed in a finite
number of ways. Erickson v. Blake, 839 F. Supp. 2d
1132 (D. Or. 2012).

Examples
1. History mystery. Lucky Jim writes a scholarly
article, the fruit of his months of research in the Fort
Wayne archives. The article describes his research
activity in detail, relates numerous interesting facts
gleaned from his readings, and argues that those facts
refute the accepted version of the history of Indiana.
Kingsley Amiss, the editor of History Journal,
reviews the manuscript and offers to publish it.
Months pass without the article appearing. Finally,
the article does appearbut it appears, word for
word, in Monthly History Revue, with authorship
attributed to Amiss. Sued for infringement, Amiss
argues that he has stolen only ideas about history,
which may be blameworthy but is not copyright
infringement. Has Amiss copied protected
expression? What if Amiss had written the essay in
his own bombastic prose, copying only Lucky Jim's
theories and some of the supporting facts but still
deceptively claiming credit for the work himself?
2. Exam copying. Each year, prospective college
students take the Scholastic Aptitude Test. Its
multiple-choice questions are intended to reflect the
test takers' abilities in various verbal and
mathematical tasks. Shady Prep Services registers a

young employee to take the test and photograph each


page with a hidden camera. Shady Prep then makes
copies of the test and uses it in the SAT prep courses
it sells to teenagers. Sued for infringement by the
makers of the SAT test, Shady argues that it has
copied only unprotectable ideas. The test, it argues,
is simply a series of ideas. Is Shady liable? What if
Shady had used the photos only to draft its own
multiple-choice questions, which loosely followed
the testing techniques of the SAT?

Explanations
1. Amiss copied protected expression, as well as
unprotected ideas and facts. The article contained
unprotectable ideas. But there are many ways in
which such ideas could be expressed. A word-forword
copy captures the expression as well as the
ideas. There is no infringement if Amiss copies only
theories and facts. Taking unprotected material does
not infringe the copyright, no matter how scurrilous
the actions may be.
2. Shady has copied protected expression, as well as
unprotected ideas. Cf. Educational Testing Services
v. Katzmann, 793 F.2d 533 (3d Cir. 1986). The SAT
test certainly contains ideas, but the questions also
contain much creative expression. Indeed, the wrong
answers may have more protection than the other
answers, because they are not unprotected facts but
instead originate with the makers of the test.

Examples
1. Neologism. Lingo coins the word flugonym, to
mean a particular type of homonym, one in which two
words with different meanings are spelled the same
way (like bear meaning to carry and bear
meaning a big shaggy mammal). One can differentiate

them from other homonyms, in which two words are


spelled differently but sound the same (like bear
and bare). For some reason, Lingo's term catches
on, being more appealing than homograph. As
Lingo sees more and more people using her word,
she wonders if, as its creator, she has some exclusive
rights in it. She would like to control the use in
various benign ways, such as to make sure it is used
accurately. Does Lingo have a copyright in the word?
2. Blues clues. Punkt paints Blue Moom, a four-byfivefoot painting, all basic blue. The painting is well
received by critics and the public. Not long after,
Vango paints Aquatic, a painting exactly the same
color and about 25 percent larger. Vango freely
admits that he copied from Punkt's work but argues
that he copied only the idea of a basic blue painting.
Has Vango copied protected expression?
3. My code. The town of Plunger, Illinois, has little
money to pay its local officials. The town decides it
badly needs a municipal ordinance governing such
matters as littering, refuse collection, and recycling.
A good-hearted local resident, Augustus Gloop,
volunteers to take on the task. Augustus spends much
of his spare time over the course of the year talking to
town workers and residents and writing the code. His
code not only provides a detailed set of rules
governing a number of town matters but does so in
amusing fashion, with puns, limericks, and a few
entertaining stories worked in. The town council
warmly thanks Augustus and unanimously adopts his
municipal code into law in its entirety. A year later,
Augustus is reading a new postmodern novel and
finds that it has copied many pages of his code
verbatim. When he writes to complain, the publisher
responds that the law belongs to the public domain.
Has the publisher copied protected expression?

Explanations
1. This example revisits the question Can a word or
short phrase be protected by copyright? The
generally accepted rule is that they cannot be
protected. In earlier chapters, we saw two good
arguments for the rule: lack of originality and failure
to qualify as a work of authorship. This chapter gives
yet another possible justification: the merger
doctrine. Because a word or short phrase is so brief,
it likely cannot be separated from the idea it
expresses. Under the merger doctrine, it would be
unprotected. Flugonym would not be protected, so
the idea it expressed could be copied. The same
would be true of many creative short phrases.
2. Art can often present puzzles for copyright law.
Sometimes, as here, the idea behind a work is very
difficult to both define and separate from the
expression of the idea. One could say that the idea of
a work is a basic blue painting, and therefore Vango
copied only the unprotected idea. Or one could say
that the idea is a painting of one color, and that Vango
copied the particular expression of the idea. On
policy grounds, a court is likely to hold that one
painter cannot have the exclusive right to make blue
paintings and therefore that Vango copied only the
unprotected idea.
3. Under the Veeck approach, the municipal code would
lose copyright protection when it was enacted into
law, on the theory that it is a statement of the law and
therefore an unprotected idea (or that its expression
merges with the unprotected ideas it expresses). For
the reasons discussed in the text, other courts might
differ. Rather, the code could remain under copyright
but be subject to appropriate fair use. Under that
approach, the publisher of the postmodern novel is
potentially infringing. The publisher could still argue

that it had made a noninfringing fair use. Fair use is


discussed later in the book.

Example
1. Ratz again. Bryant works for Mattel, designing
fashion and hairstyles for high-end Barbie dolls.
Bryant's contract provides the following: I agree to
communicate to the Company (Mattel) as promptly
and fully as practicable all inventions (as defined
below) conceived or reduced to practice by me
(alone or jointly by others) at any time during my
employment by the Company. I hereby assign to the
Company all my right, title and interest in such
inventions, and all my right, title and interest in any
patents, copyrights, patent applications or copyright
applications based thereon (emphasis added). The
contract further provides: [T]he term inventions'
includes, but is not limited to, all discoveries,
improvements, processes, developments, designs,
knowhow, data computer programs and formulae,
whether patentable or unpatentable. Bryant has an
idea for a Bratz line of dolls and makes some
sketches and model. Bryant later leaves Mattel for a
competitor, who makes and sells the Bratz dolls,
reaping millions of dollars. Is Bryant liable for
breach of contract?

Explanation

1. Bryant is not liable for breach of contract. He agreed


to communicate and assign his rights to inventions,
as defined in the contract. An idea for a line of dolls
did not fall within the contract's definition of
invention. See Mattel Inc. v. MGA Entertainment
Inc., 616 F.3d 904 (9th Cir. 2010). Mattel did not
have the right to the multimillion-dollar deal. This
example illustrates that one can use contracts to
control the rights of noncopyrightable ideasbut
those contracts must be carefully drafted.

Chapter 6 more excluded subject matter

Examples
1. Fosbury flop. In 1968, Dick Fosbury changed the
sport of high-jumping. He introduced a radically new
technique, jumping headfirst and facing the sky. The
Fosbury Flop turned out to be the most efficient
way for people to high-jump, both in terms of physics
and physiology. It is now the standard technique.
Could Fosbury have copyrighted the move?
2. Theme song. The Flimpsons is a weekly television
show. Its catchy theme song, Meet the Flimpsons,
begins the show each week. The song wittily
introduces the main characters and the premise of the
show, and is also used to market the show. A local
bar regularly plays the song without a license from
the copyright owner, arguing that the song is
functional and therefore not protected. Is the song an
unprotected functional work?
3. Kregos revisited. Recall that Kregos sells a pitching
form, listing nine items of baseball statistics, for use
by baseball fans. The purpose of the form is to
provide information with which a baseball fan could
use her own knowledge to predict the likely
performance of a pitcher. We discussed earlier the
fact that the form is sufficiently original to qualify for
copyright protection, but should it be excluded from
protection for another reason, namely functionality?
4. Taxonomy. The American Dental Association created
the Code on Dental Procedures and Nomenclature.
The code classifies all dental procedures into groups
and gives each procedure a number, a short
description, and a long description. One example
would be #04267, classified among surgical
periodontal services, with the short description

guided tissue regenerationnonresorbable barrier,


per site, per tooth (includes membrane removal),
and a longer, more detailed description of the
procedure's steps. An insurer copies the numbering
system and short descriptions into its own dental
procedures manual. Sued for infringement, the insurer
argues that it has copied only an unprotected system
of classifying dental procedures.
5. Stolen act. Ved the Magician devises ingenious ways
to make pigeons appear from his sleeve, mice
disappear from boxes, and playing cards pop up on
demand. Roman attends Ved's shows, figures out the
tricks, and incorporates them in his own act.
Copyright infringement?

Explanations
1. Fosbury could not have copyrighted the move,
because it is functional: the most efficient way to
high-jump.
2. The theme song is not functional in the sense of
copyright law. The theme song does perform several
functions in a modest dramatic sense. It introduces
characters and the premise of the show. It may put the
viewer in a proper mood to enjoy the show. It serves
a marketing role as a reminder of a popular product.
But such aspects of a creative work are not functional
for the purpose of limiting copyright protection. The
song is not an idea, procedure, process, system,
method of operation. Nor is it an element that has
become an industry standard or is necessary for
compatibility with other products (factors that some
courts would consider). Protecting the theme song
does not limit competitors in any substantial way: A
rival TV producer can use its theme song to do
whatever she pleases without fear of infringing the
Flimpsons' theme song. Use of the song is not
necessary to comply with industry standards or to

efficiently create a television program. Therefore,


none of the factors weighing toward functionality
apply here.
3. The form is not denied copyright on the basis of
functionality. It would be unprotected if it embodied
a system for predicting the outcomes of baseball
games. If Kregos had devised a formula for using
specific statistics to predict outcomes, then the form
would probably be denied protection under Baker v.
Selden, as something necessary to implement the
system. But Kregos's form makes a more modest
claim, simply suggesting that those nine statistics
might be helpful to the fan in making her own
predictions.
4. A taxonomy might embody a classification system,
but the defendants copied more than the classification
system. They also copied the specific numbers and
the text of the individual entries. The court aptly
described why the short descriptions require creative
choices in description: Number 04267 reads
guided tissue regenerationnonresorbable barrier,
per site, per tooth but could have read regeneration
of tissue, guided by nonresorbable barrier, one site
and tooth per entry. Or use of barrier to guide
regeneration of tissue, without regard to the number
of sites per tooth and whether or not the barrier is
resorbable. Even the numbers arguably are original
creative expression: The number assigned to any one
of the three descriptions could have had four or six
digits rather than five; guided tissue regeneration
could have been placed in the 2500 series rather than
the 4200 series; again any of these choices is original
to the author of a taxonomy, and another author could
do things differently. Every number in the ADA's
Code begins with zero, assuring a large supply of
unused numbers for procedures to be devised or
reclassified in the future; an author could have

elected instead to leave wide gaps inside the


sequence. A catalog that initially assigns 04266,
04267, 04268 to three procedures will over time
depart substantively from one that initially assigns
42660, 42670, and 42680 to the same three
procedures.
5. No infringement if Roman has copied only Ved's
methods. See Rice v. Fox Broad. Co., 330 F.3d 1170
(9th Cir. 2003). A magic trick is functional, because
it accomplishes a specific task. As long as Roman
did not copy Ved's patter or creative elements not
part of the workings of the tricks, he would not
infringe.

Examples
1. Shake well. Baker Duval, after many experiments,
perfects a recipe for squish-squash, a delicious
concoction of sweet potato, squash, and
marshmallows. She writes down the ingredients and
a straightforward set of instructions for making the
dish. In writing it down, she uses standard terms and
styles for recipe writers. She e-mails the recipe to a
small group of fellow chefs. Not long after, as often
happens in copyright fact patterns, her recipe is
swiped and included verbatim in a best-selling
cookbook. Will she be entitled to a slice of the
royalties?
2. Running a tight ship. Carnivore Cruises is the most
profitable cruise company because of its ability to
operate extremely efficient ships while spending less
than its competitors on salaries and other expenses. It
owes its productivity to its founder, Efua the
Efficient. She spent years thinking of better ways to
serve cocktails, clean cabins, and amuse passengers.
All of her instructions are detailed in the company's
employee manual, a closely guarded book given to
each employee.

A competitor, Caesar Sails, sends several


employees incognito as passengers on a Carnivore
cruise. Over two weeks, the spies carefully observe
the operation of the boat and note as much as they can
in great detail. In effect, they reverse engineer most
of the content of the employee manual. Within months,
Caesar has its employees adopt dozens of time- and
money-saving instructions gleaned from its
espionage. Can Carnivore sue for infringement of its
employee manual?
3. Voop. Two kids invent Voop, a card game. They
creatively combine various elements from card
games like bridge, hearts, spades, and poker. Their
combination results in a new game that is easy and
fun to play. The kids write up the rules. Rather than a
straightforward statement of the rules, however, the
kids use many puns, puzzles, and tricks to state the
rules. They also include a number of stories and
pictures, springing from events during various Voop
games. All of this material is included in their
notebook, titled Rules of Voop. Is it copyrightable?
Suppose Yoyle read Rules of Voop, figured out the
basic rules of Voop, and wrote a concise statement of
those rules. Would Yoyle infringe the kids' copyright?
4. Rollerball. Promoter invents rollerball, a new sport
that combines various elements of hockey,
speedskating, and lacrosse, together with a few new
rules devised by Promoter. Promoter stages several
matches, which turn out to be great spectacles as well
as exciting athletic events. The number of fans
increases quickly. Knowing that he cannot copyright
the rules of play, Promoter writes detailed accounts
of the matches. Another promoter stages a rollerball
match after she reads some of Promoter's accounts.
She simply uses the same rules without staging the
same events during those games. Promoter then sues
for copyright infringement, arguing that the match

infringes the copyright in his written descriptions,


which are protected literary works. Were protected
elements copied?
5. Draft evader. The Law Society drafts a Model Right
of Publicity Statute. The society is concerned that the
right of publicity is a cause of action that varies
widely from state to state, is created by statute in
some states and common law in others (or both), and
is subject to considerable differences in judicial
application. To promote uniformity among states, the
society drafts the model statute, which the society
regards as a concise statement of the best view of the
elements, defenses, and remedies of the cause of
action. The drafters first agreed on the set of rules
that should govern the right of publicity. They then
agreed, after several drafts, on how to express those
rules. They also arranged the rules in a
comprehensive fashion. Finally, they drafted
commentary and examples to guide interpretation of
the rules. Unlike drafters of some model statutes, the
society does not urge states to adopt the model statute
as drafted, but rather to use it only for guidance in
drafting statutes. No jurisdiction has enacted the
model statute into law. Is the model statute (including
the rules as written by the drafters, the arrangement of
the rules in the outline, the commentary, and all
examples) protected by copyright?

Explanations

1. Baker Duval probably does not have a claim for


copyright infringement. A set of instructions for
making a dish is functional and therefore not
protected by copyright. A recipe could have
protection if it had creative, expressive elements
additional to the functional elements. Duval's recipe
was evidently written in a way that simply set down
the steps to follow to make squish-squash, without

adding any creative elements that were not necessary


for implementing the unprotected functional aspects.
2. Caesar has not infringed the copyright in the
employee manual. Caesar has copied only elements
of an unprotected system described in the manual.
(Indeed, Caesar arguably has not copied from the
manual itself at all.) This example shows again that
copying unprotected elements is not copyright
infringement, regardless of how the copying is done.
3. The Rules of Voop, as written by the kids, is
protected by copyright. To the extent the rules govern
the play of the game, however, they are unprotectable
functional elements. Even though a game is for
recreation and playing the game serves no end in
itself, the rules of a game are functional. They
represent an unprotected idea, process, or system. If
the kids had written the rules in a straightforward
way, their description would have no protection.
Because card games are described by a standard
terminology, there is only one way (or only a few
ways) to succinctly state the rules. Accordingly, such
a statement is unprotected under the merger doctrine.
Otherwise, giving protection to the description of the
rules effectively protects the game itself. But the kids
chose a creative way to express the rules of the game.
Giving them exclusive rights to their particular
description does not limit others from copying the
functional aspects. For the very reason that the
description is protected, its copyright is not infringed
by Yoyle. Yoyle did not copy the creative, protected
aspects of the description. Rather, Yoyle copied only
unprotected functional aspects.
4. The rival promoter has not copied protected
expression. Promoter does have copyright protection
in his detailed descriptions of the rollerball games.
The rules of rollerball are not protected (as an idea,
system, or process). His descriptions, however,

capture much more than the rules. They describe the


events in particular games of rollerball, as well as
other details like descriptions of players and the
crowd. The rival promoter, however, did not copy
the protected expression. Rather, by staging her own
rollerball games, she simply copied the unprotectable
rules of play.
5. The rules of a game have been deemed unprotected
because copying the rules is necessary to implement
the game, an unprotected procedure. One might then
expect that a model statute setting forth the rules
governing the right of publicity would also be
unprotected. However, although authority on the
subject is sparse, copyright has been generally
recognized in model statutes. The model statute sets
forth proposed rules, which in themselves are
unprotected as ideas, systems, or procedures. But the
model statute also contains creative elements, such as
the arrangement of the rules, the wording chosen to
describe particular rules, and the commentary and
examples chosen to illustrate the rules. Only if the
rules could be expressed in one (or a few) forms of
expression would the draft statute be denied
protection. Here, that is not the case. The drafters
found numerous possibilities to express individual
rules. They arranged the rules for creative reasons,
unconstrained by functional considerations. The
examples would also be creative expression. An
infinite number of examples could be devised to
illustrate the application of broad-ranging rules.

Examples
1. The examined life. Bug is a very busy person. She
works as an independent software developer, takes
evening courses in law, and has a family with four

kids. She uses some of her precious time to write a


computer program that will give her more time. The
program runs a calendar, maintains an updated
contact list (friends, kids' friends, doctors, teachers,
coaches), schedules a carpool, sends out thank-you
and reminder e-mails, and performs various other
mundane yet critical tasks. Bug uses the program
herself, then sells copies to a few dozen people in
town. She learns that one buyer, Abel, made several
copies and sold them. Another buyer, Babel, watched
Abel using the program a number of times and wrote
another program that performed all of the same tasks.
The overall structure of the program is similar, but
the code written to implement that structure is quite
different. Have Abel or Babel infringed Bug's
copyright?
2. An elegant solution. At work one day, Bug takes on
the task of writing a program that will use publicly
available data from a weather satellite to calculate
the amount of energy a particular area receives in the
form of sunlight. Bug tries various approaches to the
problem. Finally, she comes up with a brilliant
solution and writes an extremely short program that
performs the task, ingeniously using only about six
lines of code. Does Bug have a copyright in her short
but powerful program?
3. Let a thousand flowers bloom. Blossom Software
sells Wypo, a popular photo-processing program that
consumers use to manipulate digitized pictures. Wypo
presents a user with commands such as Stretch, Copy,
Print, and Even Out Colors. The user can make
sophisticated changes by using these rather simple
commands. The commands are arranged in various
menus, which pop up for different tasks. A competitor
develops a new spreadsheet program. To lure
customers who are using Blossom's program, the
competitor copies the commands and the pop-up

menu structure. This way, a Blossom user can switch


to the new program without learning a new set of
commands and menus. By copying those elements, the
new program is also compatible with other Blossom
software products, making it more attractive to
Blossom users. Has the competitor copied
unprotected functional elements or protected creative
expression?
4. Mirroring Windows. Commentators have raised the
following puzzle: Copyright law protects Microsoft's
Windows operating system. Copy right law, however,
protects only the expressive aspect of works, not
their functional aspects. Another software company
could copy the unprotected functional aspects of
Windows and sell the functionally equivalent
program to a big market without violating the
copyright. Why has not this been done by another
mighty software company?
5. Java. Google wanted to make Android phones work
with the widely used Java language so developers
could write apps in Java to run on Android phones.
Unable to agree on a license with Oracle, which
owns Java, Google decided instead to independently
develop software that worked with Java. Google did
not copy the code that runs Java but did copy the
structure, sequence, and organization of the code
that runs Java. To do that, Google also copied Java's
application programming interfaces (APIs). For
Android developers to use Java functions, Android
copied the names and headers for the Java modules.
For example, Google would copy the header for a
method that compares numbers,
java.lang.Math.max, and then write code that does
the comparison and returns a result. Did Google copy
creative expression, which is protected by copyright,
or functional matter, which is not copyrightable?
6. Tetris. In Tetris, developed in the USSR in the 1980s,

players must align falling geometric block pieces


(called tetrominos) to fill the horizontal lines. Mino
wrote and sold code to reproduce Tetris. As the court
described it, [T]he style of the pieces is nearly
indistinguishable, both in their look and in the manner
they move, rotate, fall, and behave. Similar bright
colors are used in each program, the pieces are
composed of individually delineated bricks, each
brick is given an interior border to suggest texture,
and shading and gradation of color are used in
substantially similar ways to suggest light is being
cast onto the pieces. Tetris Holding, LLC v. Xio
Interactive, Inc., 863 F. Supp. 2d 394 (D.N.J. 2012).
Infringement, or permissible copying of a functional
game?

Explanations

1. Babel is not liable for infringement. Babel copied


only functional elements. Babel watched how the
program worked and wrote one that performed the
same functions. That is not infringement.
Abel is potentially liable. Abel made several
copies and sold them. Presumably, Abel copied not
just the unprotected functional elements but also the
protected expression of those elements in the literal
lines of object code.
The example does not ask about a more difficult
case in which someone looked at the source code of
the program in detail and copied it rather closely in
writing her own code. Addressing that question
would require more facts about the program itself
and the specific elements that were copied. This
example just shows that in general, wholesale literal
copying of software is likely to infringe, but simply
copying the function of a program does not.
2. Bug probably does not have a copyright. In general,
computer programs are protected by copyright, but

this program is so short and written so ingeniously


that it is probably denied copyright under the merger
doctrine. Short programs may reveal high levels of
creativity and may present simple, yet unique,
solutions to programming quandaries. Just as a
mathematician may develop an elegant proof, or an
author may express ideas in a spare, simple, but
creative manner, so a computer programmer may
develop a program that is brief and eligible for
protection. But unless a creative flair is shown, a
very brief program is less likely to be copyrightable
because it affords fewer opportunities for original
expression. Lexmark International v. Static Control
Components, 387 F.3d 522, 542-543 (6th Cir. 2004).
The functional aspects of Bug's program are so
closely identified with its short text that it is not
copyrighted. Otherwise, Bug might effectively have
exclusive rights in the functionality of the program. If,
however, a program could easily be written that did
the same thing using different code, the answer would
be different.
3. This example is drawn from Lotus Development v.
Borland International, 49 F.3d 807 (1st Cir. 1995).
Courts have differed on whether such elements of
software are protected by copyright. A narrow view
of functionality would deem the menu command
hierarchy to be protected expression. The
unprotected idea is the use of a hierarchical set of
commands to implement the photo-editing program.
The particular set of commands and menus chosen is
only one possible expression of that idea. Another
software developer could have achieved the same
function with a completely different set of commands.
Another view, concentrating on interpreting the
specific categories in 17 U.S.C. 102(b), could be
that the set of commands is an unprotected method of
operation. The user uses the program by responding

to the menus the program presents. Likewise, the set


of commands could be deemed an unprotected
system: The set of commands function together to
perform the functions of the program.
Yet another view would be to deem the set of
commands to be functional simply because it is
necessary to achieve compatibility with other
Blossom products. Consumers have become
accustomed to using Blossom's set of commands.
Copying the elements also allows the new program to
interact with other Blossom software products. A
court could hold that such compatibility
characteristics make the set of commands functional.
Standing alone, this is probably the weakest argument
for functionality.
4. Several reasons militate against such a strategy, as
explained in Mark A. Lemley and David McGowan,
Legal Implications of Network Economic Effects, 86
Cal. L. Rev. 479, 528-530 (1998). Although
copyright does not protect functional aspects of the
program, there remains legal uncertainty about which
aspects are functional. Also, other intellectual
property (such as patents or trade secrets) might
protect some aspects of the program. More important
than the legal uncertainties, perhaps, the market risks
would be great deterrents to a commercial
competitor. Reverse engineering the program is a
time-consuming and uncertain enterprise, and
Microsoft periodically upgrades the program, which
means that a commercial competitor might have
difficulty in selling an up-to-date product. Consumers
might also be wary of whether the program was truly
a functional substitute. Finally, and most dulling to
the incentives, Microsoft presumably has the ability
to lower the price of its program to compete with any
new entrant, greatly reducing the potential payoff. All
in all, it makes little sense for a commercial

competitor to make the huge investments in


development and marketing that would be required to
compete when other avenues of investment are likely
to be more fruitful. This may explain why no largescale
commercial software developer has taken on
such a project.
Others with different incentives have at least
attempted parts of it. Some open source developers
(who give their software away) have attempted such
efforts for such purposes as honing their
programming and reverse-engineering skills and
adding to the free software movement. The WINE
program allows computers running other operating
systems, such as LINUX, to run Windows programs.
5. Under Lotus, this would seem like permitted copying
of functional matter. The hierarchy of methods and
wording of headers sounds like the hierarchy of
menus and wording of menus that were held
unprotected in Lotus, but the Federal Circuit took a
different approach. Oracle Am., Inc. v. Google Inc.,
750 F.3d 1339 (Fed. Cir. 2014). Like the trial court
in Lotus, it focused on whether there were other
ways to accomplish the same function. In fact, there
were: Google could have used a different taxonomy
of methods and used different headers to have its own
program to implement a programming language
(although it would not have been compatible with
Java). The holding, however, was quite narrow. The
court remanded to the trial court to determine if
Google was protected by fair use. Only future
developments will show how far apart Oracle and
Lotus really are.
6. Infringement: Mino copied not just the functional
elements of how the game worked but also its
aesthetic elements. There was no necessity for Mino
to mimic Tetris's expression other than to avoid the
difficult task of developing its own take on a known

idea. Tetris Holding, LLC v. Xio Interactive, Inc.,


863 F. Supp. 2d 394 (D.N.J. 2012).
Fashion: As a result, copyright gives fashion designers
little protection against copying (as long as the copier
does not infringe the relevant trademark, as opposed
to copyright).
physical separability. Under this approach, a creative lamp
design is not protectable because the shape of the lamp is
not physically separate from its functional aspect. See
Esquire, Inc. v. Ringer, 591 F.2d 796, 807 (D.C. Cir. 1978). The
physical separability approach is the most difficult one for the
author to meet because it requires that the work contain
separable
physical elements.
most courts now require conceptual separability. This
can be understood several ways. There may be conceptual
separability if the article has a useful function but is also
shown to be appreciated for its aesthetic appeal. A belt
buckle design could have separability if the buckles
produced from it served to buckle belts but also were
displayed as artworks in a museum, sold to art collectors,
or featured in design magazines. See Kieselstein-Cord v.
Accessories by Pearl, 632 F.2d 989 (2d Cir. 1980).
Another approach is to ask whether an individual thinks of
the aesthetic aspects of the work as being separate from its
functional aspects. Yet another approach considers the
design process: There is separability only if the designer
is able to make aesthetic choices that are unaffected by
functional considerations. A serpentine bicycle rack
design is unprotected because every change in the shape
made for aesthetic purposes affects the function of the bike
rack. See Brandir International v. Cascade Pacific
Lumber, 834 F.2d 1142 (2d Cir. 1985).

Examples
1. Useful articles? Only useful articles are subject to
the separability requirement to qualify for copyright
protection. Which of the following are useful
articles? Of those, which meet the separability
requirement?
a. Swiss army knife
b. Instruction manual for a car
c. A human dummy used in anatomy classes
d. A radiator cover with an ornate design
e. A car engine
f. Design of an automobile body
2. Mannequin. Pad designs a human torso form, which
is used to display clothing. In designing the form, Pad
attempts to make it both realistic-looking and well
suited for draping clothing. The form works very
well, and a number of stores and clothing designers
seek to buy from Pad. Another designer, Sad, copies
Pad's form exactly and offers a similar form at a
lower price. Has Sad copied protected expression?
3. Man again. Tad creates a sculpture of a human torso.
Tad's sculpture is quite realistic, capturing a form that
is both lifelike and aesthetically appealing. Is the
sculpture protected expression?

Explanations

1. A useful article is an article having an intrinsic


utilitarian function that is not merely to portray the
appearance of the article or to convey information.
a. The Swiss army knife is a useful article. It has
numerous utilitarian functions (cutting, opening
bottles, unscrewing screws, opening cans) and
does not merely portray its own appearance or
convey information.
b. A car's instruction manual is useful, but is not a
useful article. It has a utilitarian purpose, but

that is to convey information.


c. A human dummy designed for use in anatomy
classes is not a useful article. It serves both to
portray its own appearance and to convey
information.
d. The radiator cover is a useful article. It is
ornamental but does not serve to merely
portray its own appearance. Rather, it has other,
utilitarian functions (hiding the radiator and
preventing burns).
e. A car engine is a useful article. It satisfies the
statutory definition.
f. A car body is a useful article. Like the radiator
cover, it has both aesthetic and utilitarian
functions.
Of the useful articles, the designs of the Swiss army
knife and the car engine are very likely unprotected,
because they lack utilitarian aspects separable from
their aesthetic features. Whether the designs of the
automobile body and radiator cover are protected
depends on which test of separability the court
employs. Both designs lack physical separability.
The automobile body might also lack conceptual
separability under the design process test, because
any change in the design would affect the functional
aspectschanging the shape, for example, would
affect the aerodynamics. But if the broader approach
were used, the aesthetic aspects would be shown by
displays in museums and in magazines. The radiator
cover likely passes all the conceptual separability
tests. The variation in design does not affect its
function. It also has aesthetic features that make one
appreciate it separately as an artwork.
2. The torso form is a useful article. It has a utilitarian
function (to drape clothes) and does not serve to
convey information. Accordingly, it is protected only
if its aesthetic features are separable from its

utilitarian aspects. The design lacks physical


separability, so a court using that test would hold it
unprotected. Because its design is geared solely
toward its utilitarian role, it probably also lacks
conceptual separability. Under the design process
test, none of the design choices are free of functional
considerations. Even under the broader approaches,
separability is lacking. The aesthetic features still are
linked to the utilitarian aspects. There is no
suggestion that it can be appreciated simply as a
work of sculpture. Cf. Carol Barnhart, Inc. v.
Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985).
The result would be different if the mannequin also
had purely expressive features, not affected by its
functional role, such as sculptural elements designed
to give it a hungry look. See Pivot Point Int'l, Inc.
v. Charlene Prods., 372 F.3d 913, 931 (7th Cir.
2004).
3. Tad's sculpture of a human torso is probably
protected. It is not a useful article. As a sculpture,
it has no utilitarian function. Therefore, it is not
subject to the separability test. Rather, whether it is
functional would be determined by the general
functionality analysis (which varies from court to
court, as discussed above). Under any approach,
however, a pure sculpture likely is not functional.
Could be useful: What constitutes a part of a work
remains an open question. For example, every chapter of a
book might
make unauthorized use of material from another
copyrighted book. A court could reason that because each
chapter makes unlawful use of material, each chapter is
not protected, making the entire work unprotected even if
Author adds much original expressive material. Likewise,
if Author instead makes a film closely based on the story,
a court could deny copyright to the entire film. Another

approach is for the court to separate out portions that do


not use protected material and to hold those portions to be
copyrightable.

Examples

1. Guitar. The musician sometimes known as Prince


often refers to himself with an elaborate,
unpronounceable, copyrighted symbol of his own
devising. He gives permission to various entities to
use the symbol on T-shirts and other products.
Without Prince's permission, an instrument maker
fashions a guitar in the shape of the symbol and
shows it to Prince. Soon, Prince appears in concert
with a similar guitar. Is Prince liable for copyright
infringement?
2. Payback Day? The makers of the film Groundhog
Day used ideas copied without permission from the
novel One Fine Day. That does not constitute
copyright infringement because ideas are not
protected by copyright. The writer of One Fine Day
obtains a copy of Groundhog Day and starts making
copies and selling them to the public. The writer
argues that Groundhog Day is itself not protected by
copyright because the complete film is based on
ideas taken without permission from another work. Is
Groundhog Day unprotected by copyright?
3. Free for all? Andre writes a novel, My Birthday.
Bootles unscrupulously copies in wholesale fashion
from My Birthday in writing his novel, Bad Dog
Day. Every part of Bad Dog Day makes ample use of
original creative expression from My Birthday.
Clever then makes and sells copies of Bad Dog Day
without permission from Andre or from Bootles.
Clever contends that her actions are not copyright
infringement. Bad Dog Day is unprotected by
copyright because it copies so much from My
Birthday. Accordingly, Clever argues, it is not

infringement to copy or sell copies of Bad Dog Day.


Has Clever copied protected expressionand if so,
whose?
4. Partial protection. Dorrie publishes Yippie, a social
history of the 1960s. Critics quickly point out that
every chapter of the book contains paragraphs lifted
verbatim from Hippie, a copyrighted book published
several years back. The rest of the book is evidently
Dorrie's original work. Dorrie's publishers retract
the book, then republish a redacted version with all
of the copied material removed. Zippy Press scans
the book and starts printing and selling copies,
arguing that there is no copyright in Yippie because it
was an infringing work. Is Zippy right?

Explanations
1. Prince is not liable for infringement. The guitar
design was based on the copyrighted symbol.
Assuming it was infringement to copy the symbol,
then there is no copyright in any part of the guitar
design using the symbol. Assuming the entire design
depended on the symbol, because it set the shape of
the guitar, then the entire design of the guitar would
be noncopyrightable. There would be no infringement
for copying it. See Pickett v. Prince, 207 F.3d 402,
406 (7th Cir. 2000). Note also that some elements of
a guitar's design would be functional and therefore
noncopyrightable.
2. Groundhog Day is protected by copyright. The bar to
copyright for works making unauthorized use of
preexisting material applies only to unlawful use of
such material. Copying of ideas is not unlawful. To
the contrary, the nonprotection of ideas is intended to
encourage the copying of ideas by authors. Copyright
encourages the free flow of ideas by providing
enough protection for the creation of works but not so
much protection to discourage the free use of ideas.

3. Clever has copied protected expressionfrom My


Birthday. Every part of Bad Dog Day makes
unlawful use of infringing material copied from My
Birthday, so Bad Dog Day is denied copyright
entirely. Copying Bad Dog Day does not infringe any
copyright in Bad Dog Day, but anyone who makes
literal copies of Bad Dog Day does copy protected
expression from My Birthday (because that
expression had been copied into Bad Dog Day).
Therefore, such a copier infringes the copyright in
My Birthday. The fact that Bad Dog Day is not
protected by copyright does not effectively put My
Birthday into the public domain.
4. Yippie infringed the copyright in Hippie. Therefore,
there is no copyright in any part of Yippie that used
infringing material. This example raises the question:
What is a part of a work? Each chapter contained
paragraphs copied from Hippie but also many
separate, original paragraphs. If a chapter is a part
of a book, then one could conclude that each chapter
is unprotected. If each paragraph is a separate part,
then only the infringing paragraphs are denied
copyright.
There is little case law on this issue. It would
seem that one could best define part by looking at
how the material was used. Perhaps copyright should
be barred for all elements that depended on use of
infringing material. Here, that would lead to the
conclusion that the original paragraphs would be
protected by copyright.

Examples
1. Entitled to my opinion. Handy, a federal judge,
writes a draft of a blistering dissent in the case of
Soda v. Pop. The draft sets forth Handy's unorthodox

views on the doctrine of equivalents, interspersed


with ad hominem attacks on the other judges on the
panel. After reconsideration, Handy decides not to
submit the opinion but simply to join in the majority
opinion. She thinks she has destroyed every copy of
the draft. Much to her dismay, she learns that the
National Jaw Journal has obtained a copy and plans
to publish it. She seeks to prevent publication,
claiming the copyright in the opinion. A draft opinion
that was never submitted, she argues, does not have
the force of law and therefore should not be treated
as a government work. Is the draft opinion
copyrighted?
2. Article of impeachment. Dandy, another federal
judge, drafts an article about ceramics. The article
has nothing to do with Dandy's duties but is written
for purely personal purposes. The article argues that
ceramics have played a hitherto unappreciated role in
historical developments. The article is based more
on Dandy's imagination than on historical research. Is
the article a nonprotected U.S. government work?
Would it make a difference if the article were
actually written by Dandy's law clerk, acting on
Dandy's orders, working in his office during normal
office hours?
3. Brief encounter. Advo submits an amicus brief in the
case of Soda v. Pop. Advo, a beverage lawyer, is
deeply interested in the issues raised by the case and
submits the brief to suggest to the court a resolution
that balances various competing policies. Months
later, Advo is surprised to see her brief reprinted in
Vending Machine Law Journal. The editors of the
journal tell Advo that they did not ask her permission
for publication because a brief submitted in a federal
case is a U.S. government work, unprotected by
copyright. Did Advo produce an uncopyrighted
work?

4. Animal farm. The U.S. Department of Agriculture


decides to make an entertaining documentary about
methane as an alternative energy source, intended for
instructional use in high schools. It has a number of
employees in its film production department, but they
are all booked on other projects. The department
pays an independent contractor a lump sum to write
and produce the film, leaving all the creative and
production details up to the contractor. The contract
stipulates that the copyright in the film belongs to the
U.S. government. The film is completed, and copies
are distributed to a number of teachers. Gadfly, an
activist, obtains a copy, and then makes and sells
copies. Gadfly argues that the film is not protected by
copyright because it is really a product of the federal
government. Otherwise, Gadfly contends, the U.S.
government could engage in the sort of limits on
distribution of publicly financed works that the
statute seeks to prevent. Is the film a U.S. government
work?
5. Slowpoke County maps. Slowpoke County prepares
info maps that provide lots of information about
Slowpoke County. Slowpoke prepares the maps by
having employees sift through information from the
county's public real estate and other records, as well
as various sources of data in the local public library
and online. The maps provide much information
about Slowpoke's economic and social makeup.
Reading the map gives its viewer an overall picture
of the businesses, schools, residences, farms, and
other community-related organizations that make up
the county. Slowpoke makes the maps to promote the
county. Slowpoke sells the maps for a modest price
to real estate agents, investors, tourists, historians,
and various others interested in such data.
Slowpoke's revenue from the maps almost exactly
matches its costs. Indeed, without the revenue,

Slowpoke's council well might not authorize the


activity. Floyd, the local barber, makes a copy of one
of the maps and begins selling them to Slowpoke's
usual buyers for half the price. Floyd argues that
Slowpoke cannot claim a copyright in a governmentproduced
work. Are the maps copyrightable?
6. Copyright a patent? Christopher invents an
automatic macaroni-and-cheese maker. He drafts a
patent application. The application has two principal
parts: the written description, which artfully
describes the device and how to make it, and the
claims, which set the boundaries of his claimed
rights. The U.S. Patent and Trademark Office allows
the claims and issues a patent. The patent contains the
written description and claims, which taken together
define the scope of Christopher's rights.
Andy, writing a book on patent law, considers
including portions of Christopher's patent in a book
on software law. A patent office regulation permits
facsimile reproduction of the entire patent (37
1.71(e)), but that would take up too much space in
Andy's book. Does Andy need Christopher's
permission? Would it be different if Andy were
writing a book about food technology?
7. Monumental. The U.S. government is holding a
competition seeking a design for a monument to the
space shuttle. Frank submits the winning design. In
negotiations, Frank declines to assign the copyright to
the government. He still gets the contract and builds
the monument. Is it copyrighted?

Explanations
1. The draft opinion is not subject to copyright. Handy
is a federal employee, so any work she creates as
part of her official duties is a noncopyrightable work
of the U.S. government. The statute does not
differentiate between categories of work but applies

across the board. Whether the draft is submitted, has


legal effect, or ever sees the light of day is irrelevant.
The only question is whether Handy prepared it as
part of her official duties. Had she vented her
feelings in a personal diary, the result would be
different, but preparation of draft opinions is well
within the scope of a judge's official duties.
2. The article is not a U.S. government work, which is
work prepared by a federal officer or employee
within the scope of that person's official duties. A
federal judge's official duties include presiding over
cases, drafting opinions, and participating in the
administration of the courts. An article on ceramics
written for purely personal purposes does not qualify
because it is a personal project.
If the law clerk drafts it, the article is a
nonprotected U.S. government work. The law clerk is
a federal employee, and her duties probably include
following the orders of her boss, including drafting
the article. From her point of view (unlike Dandy),
the writing is not a personal work but is a part of her
job.
3. Advo is not a federal employee, so her brief is not a
U.S. government work. Nor is it denied protection
under the judicial doctrine denying protection to
official legal documents. The brief may set forth
Advo's view of the law, but it does not
authoritatively establish law, unlike a judicial
opinion or legislative edict. By custom, lawyers have
rarely enforced copyright in briefs or other
documents that are made part of the public record
and the fair use doctrine (discussed in Chapter 5)
authorizes some uses of such works.
4. The film is not a U.S. government work. It is a
copyrighted work, with the copyright owned by the
U.S. government. The statute, by its terms, applies
only to works prepared by U.S. officials or

employees. An independent contractor, who is neither


an official nor an employee, prepared the film. The
statute also specifically permits the United States to
acquire ownership of copyrights. The statute
contemplates that the United States will indeed have
exclusive rights in some works, with the attendant
ability to restrict their reproduction, distribution, and
performance by others. Moreover, the work at issue
does not raise the sort of censorship or due process
issues that might arise if, for example, the United
States commissioned contractors to prepare judicial
opinions and then sought to restrict their distribution.
5. The maps probably would not be denied copyright,
although they are government works. In deciding
whether official legal documents should be
noncopyrightable, courts look to whether individuals
require access to the works to have knowledge of the
law and to the incentive rationale behind copyright.
The maps contain much information, but nobody
requires access to the maps to comply with the law.
The information is available in publicly accessible
sources. In addition, the incentive rationale applies
here. If not for the ability to raise revenue from the
maps, Slowpoke might not produce them at all.
Making such maps is not necessary for fulfillment of
the county's basic governmental activities, so it is not
an activity that would occur with or without
copyright in the maps. A court might also consider
whether granting copyright creates a risk of
government censorship. When the information is
freely available elsewhere (if in a less handy form),
censorship would not appear to be a risk.
6. The patent is a U.S. government work, so is not
copyrighted, but it includes material from a
preexisting workChristopher's patent application.
The question would be whether Andy would
potentially infringe the copyright (if any) in

Christopher's patent application. Presumably, the


patent application would be copyrightable as an
original work of authorship. It would contain many
functional elements but would likely easily meet the
low standard of creativity required. The issue is what
effect it has when the application is then largely
copied into a patent issued by the U.S. government, a
document that has the legal effect of defining legal
rights. There are several possible approaches a court
might take.
Merger. Under Veeck, a court might reason that,
like a privately drafted code adopted into law, the
text is now inseparable from the law (an idea) and
therefore unprotected. But that seems to take the
Veeck approach too far, to strip copyright from every
document with legal effect.
Official government work. A court might consider
several policies: the notice required by due process
of law, the incentive provided by copyright to create
works, and issues of free speech. The court could
reason that the public needs access to patents (to
avoid infringement, etc.), that the patent right is
plenty of incentive to draft patents, and that free
discussion of patent rights requires they be
uncopyrighted.
Fair use. The best result would allow a balancing
of interests. A court might hold that Christopher does
not lose his copyright, but the patent text is subject to
broad fair use (discussed later in the book), such as
inclusion in a patent law text. One might argue that
using the description in a technology book is not a
fair use, because it does not depend on the legal
nature of the patent but rather is simply using
Christopher's description. But one factor in fair use
(to jump ahead a little) is the nature of the work.
Christopher drafted the application hoping his text
would wind up in a U.S. patent, so he might have

expected to be subject to use of the text by others.


This case would differ from a case where a novel
became evidence in a precedential case (defamation,
copyright infringement). In that case, the relevant
portions of the novel would be fair use for legal
discussion, but the author would not lose her entire
copyright.
Estoppel. To throw in some more review: Just as
one forfeits copyright protection by representing
creative expression as facts, so too one might forfeit
copyright by drafting something with the expectation
that it be included in an official legal document. A
party could implicitly consent to that by filing its
application with the USPTO.
7. The monument is copyrighted. It was created not by a
federal employee but by an independent contractor.
For the same reason (Frank is not an employee), the
work made for hire doctrine does not apply. Frank
owns the copyright. See Gaylord v. United States,
595 F.3d 1364 (Fed. Cir. 2010).
Chapter 7: initial owner of copyright

Example
1. Image conscious. Paparazzi, a self-employed
photographer, lingers outside the entrance to
Celebrity's apartment building. When Celebrity
emerges, Paparazzi takes a photo of Celebrity
walking by a garbage can. When Paparazzi seeks to
license the photo to various tabloids, Celebrity
claims copyright in the photo. Celebrity argues that
the photo has value only because of her hard work in
establishing her fame, and therefore the right to
exploit that fame belongs to Celebrity. Who owns the
copyright in the photo?

Explanation

1. Paparazzi owns the copyright in the photo. Celebrity


may have done all the work to establish the public
interest in Celebrity, but the copyrighted work at
issue is simply the photograph, with its image of
Celebrity. Paparazzi is clearly the author of the
photo. In deciding authorship, courts consider such
factors as who initiated the work, who contributes
creative expression, who controls the creation of the
work, who makes the creative decisions, and who
third parties would consider the author. All of those
factors weigh toward Paparazzi being the author. The
photo also is not a joint work (discussed below),
which requires (1) that each author contribute
copyrightable expression and (2) that each author
intend to be a joint author when the work is created.
Celebrity would not meet either of those
requirements. Note that Paparazzi's copyright does
not give unlimited rights to use the photo; it confers
only the exclusive rights of a copyright owner.
Certain commercial uses of the photo would make
Paparazzi liable under trademark law or right of
publicity law.
to be a work made for hire, the work must also be created
within the scope of her employment. Courts also follow
agency law here, considering several factors:
1. whether the work is of the type that the employee is
employed to perform
2. whether the work occurs substantially within
authorized work hours
3. whether its purpose, at least in part, is to serve the
Employer
Under the 1909 Act, the test
is whether the work was created at the instance and

expense of the hiring partywhich turns mainly on


whether the hiring party motivated and financed the
creation of the work.

Examples
1. Go-getter. Snaps has been a full-time employee of
Tabloid for many years. Snaps's job is to take
pictures of celebrities. Tabloid pays Snaps a regular
paycheck (subject to withholding all relevant
employee taxes, such as Social Security and income
taxes) and offers participation in the company
employee retirement plan. Tabloid assigns Snaps to
photograph specified celebrities and also instructs
Snaps to photograph celebrities if the opportunity
arises by chance during another assignment. Tabloid
also provides considerable support, including
equipment, reimbursement of expenses, and help with
logistics. Snaps discusses various matters with
editors in general terms but has great discretion in
fulfilling his duties. Snaps's work hours are largely
set by Tabloid, although Snaps sometimes fits in jobs
before or after the assigned hours. Snaps has signed a
multiyear employment contract, which does not
contain a clause assigning copyright in Snaps's
photos to Tabloid. One photo target is Celebrity.
Snaps, using considerable creativity, captures a great
photo of Celebrity pushing aside a nonentity to get a
taxicab. Who owns the copyright in the photo?
2. Multitasker. Tabloid requires Snaps to spend
Monday mornings in his office at Tabloid to be
available for meeting with editors. While sitting at
his desk, Snaps borrows a pad of paper from a
secretary and writes a short story about an
adventurous celebrity photographer. Snaps writes the
story purely for personal purposes, hoping vaguely to
use it one day in a book. Just after finishing the story,
Snaps learns that Laura Lawyer, a famous defense

attorney, is having lunch in a nearby park. Snaps


hurries off, camera in hand, and leaves his new
manuscript sitting on the desk. An editor picks it up
and decides to publish it in Tabloid's Sunday
Magazine. Snaps learns of this and demands an extra
bonus. Who owns the copyright in the story?
3. Opportunity knocks. Snaps leaves his camera gear in
the office one Monday while he goes for a stroll.
Suddenly, he notices that Wobbly Allen, a reclusive
filmmaker, is ambling toward him, hiding behind big
sunglasses and a sombrero. Snaps grabs a camera out
of the hands of Terry Tourist and quickly takes six
pictures of Allen. Tourist then grabs back the camera
and vanishes. Snaps learns that Tourist is peddling
the photos to other tabloids. Tourist argues that
because the photo was made with Tourist's camera,
the copyright belongs to Tourist. Who owns the
copyright in the photos?
4. The new guys. Foodko hires two eager employees to
work in its meat packing area. They sign detailed
employment contracts, are put on the payroll, and are
subject to supervision by various bosses. The
employees are actually television producers, fulltime
employees of Network, making an undercover
investigation of food industry practices. The two
producers covertly videotape their workplace,
recording various unsavory and unsafe things done
with meat intended for consumers. To suppress the
making and distribution of the video, Foodko claims
that Foodko owns the copyright because it was made
by Foodko employees while working at their jobs in
the meat packing area. Who owns the copyright in the
video?
5. The occasionals. Two photographers work
sporadically on the set of the Harpoon television talk
show. The producers hire them for a few days a
month to capture still photographs of the lively

program. When not working at the Harpoon show, the


photographers take other freelance assignments. The
Harpoon producers pay them cash and do not treat
them as employees for payroll, tax, benefits, or other
purposes. The producers set up the set, select guests,
and largely control the proceedings. The producers
do not pay any attention to the photographers and do
not consider the photographers when making various
choices about how to stage the show. The
photographers decide when and how to take photos,
under no supervision by the producers (other than to
stay out of the way). Who owns the copyright in the
photographs?
6. Informality. A software developer takes on various
projects for a start-up company. He works under the
supervision and direction of the company, takes on
additional tasks when assigned, and regards himself
as an employee in his dealings with the company. But
he is relatively independent. He works at home, not
at the office. He sets his own hours and working
conditions. He does not receive a salary but is paid
in stock. The company does not list him as an
employee for tax purposes or employee benefits. Is
the software he writes a work made for hire?
7. Terms of employment. Stallman does occasional
freelance consulting for Softco. The terms of their
contract provide that Softco owns copyright in all the
code Stallman writes for each project. But Stallman
later contends he owns the copyright. He was an
independent contractor working sporadically; hired
and paid for specific projects; completely in control
of how, when, and where he worked; and not listed
as an employee for taxes or any other purpose. The
contracts even listed him as Stallman Contracting.
Who owns the copyright?

Explanations

1. The copyright in the photo belongs to Tabloid. A


work is a work made for hire if it is made by an
employee within the scope of his employment.
Whether the hired party is an employee or is an
independent contractor is governed by the factors
listed in the text above. Almost every factor favors
finding an employment relationship here. Snaps
receives a regular paycheck; Tabloid withholds taxes
consistent with an employment relationship; Tabloid
provides Snaps employee benefits; Tabloid assigns
jobs to Snaps and sets Snaps's hours; Tabloid also
provides other support, such as reimbursing expenses
and helping with logistics. The only factors at all
tending toward a finding that Snaps is an independent
contractor are that Snaps has considerable discretion
in carrying out assignments and that he took the
initiative in snapping the particular photo. But the
weight of the other factors shows that Snaps is an
employee, albeit one with some discretion.
For the photo to be a work made for hire, it must
also have been within the scope of the employee's
employment. That is clearly met here; Snaps's job is
to take pictures of celebrities, and here he did exactly
that.
2. Snaps owns the copyright in the story. He is an
employee, but the work is only made for hire if it is
created within the scope of his employmentin this
case, to take photos of celebrities. As the text above
states, the relevant factors are
a. whether the work is of the type that the
employee is employed to perform
b. whether the work occurs substantially within
authorized work hours
c. whether its purpose, at least in part, is to serve
the employer
Here, only the second factor weighs in favor
of its being within the scope of his employmentand

very weakly so because he was simply biding time.


Writing a story is well outside his job of taking
pictures, and the purpose was purely personal, so the
work is outside the scope of Snaps's employment and
therefore not a work made for hire.
3. The copyright belongs to Tabloid. Snaps created the
photo. Snaps made all the relevant creative decisions
and controlled the production of the photo. He did
make unauthorized use of Tourist's camera, but those
are not relevant factors here. Snaps is an employee of
Tabloid, working within the scope of his
employment, so the copyright belongs to Tabloid.
The foregoing applies only to the copyright. If
Tabloid wishes to exploit its copyright, it may need
access to the camera (or at least the card with the
pictures). Personal property law would determine the
ownership of the camera and cardand they
presumably still belong to Tourist. So Tabloid owns
the copyright, but Tourist owns the physical
embodiment of the pictures. Neither can exploit their
property without the other, which would encourage a
mutual agreement.
4. Network owns the copyright. The producers were
indeed employees of the food companybut the
video was not made within the scope of their
employment. It was made on Foodko premises on
Foodko time, but the nature of their employment was
far removed from making revelatory videos. The
video was made by employees of Network within the
scope of their employment. Network accordingly
owns the copyright. Cf. Food Lion v. Capital
Cities/ABC, 946 F. Supp. 420 (M.D.N.C. 1996).
5. The photographers own the copyrights in the photos.
The photographers are not employees. Although they
are paid by the producers, all the other factors weigh
in favor of their being independent contractors rather
than employees. They work only sporadically, are not

paid out of the payroll, and are not treated as


employees for purposes of benefits or other
employment arrangements. The producers do control
the set and proceedings of the show but do not
exercise control over the making of the photographs.
Producers might also argue that the photos are joint
works. Argu ably, the producers meet the first
requirement, contribution of copyrightable
expression. The producers control the staging of the
set and the proceedings, so their creative decisions
would contribute to the content of the photographs.
But there must also be intent on the part of all parties
to be joint authors, and that is not shown here. Cf.
Natkin v. Winfrey, 111 F. Supp. 2d 1003 (N.D. Ill.
2000).
6. Courts are very leery when a company fails to treat a
person as an employee for tax and other filing
purposes and then claims the person as an employee
to claim ownership of copyright. JustMed, Inc. v.
Byce, 600 F.3d 1118 (9th Cir. 2010) took a more
practical approach. The court emphasized that the
dispute arose in a small start-up company, where
there is often insufficient attention to formalities. The
substance of the relationship was an employment
relationship, and so the software was a work made
for hire. JustMed shows that courts approach the
issue with flexibility. It also emphasizes the practical
point: the company should have had a signed writing
agreeing that it would own the copyright in the
software. Then there would be no need to deal with
the uncertainty of the work made for hire doctrine.
7. This example reminds us that the parties can (and
generally should) assign ownership of the copyright
by agreement. The copyright was not a work made
for hire. The copyright vested initially in Stallman
and instantly transferred to Softco, per the agreement.
Ownership of the copyright depends on the work

made for hire doctrine only when the parties have not
already settled the matter.
A non-employee work will be a work made for hire if it:
a. is specially ordered or commissioned; and
b. falls into one of nine specific categories (a
contribution to a collective work, a part of a
motion picture or other audiovisual work, a
translation, a supplementary work, a
compilation, an instructional text, a test, answer
material for a test, or an atlas); and
c. the parties sign an agreement designating it to be
a work made for hire.
When Scholar agrees
that the translation will be a work made for hire, Scholar
effectively gives up any rights to terminate the transfer.
Likewise, if the screenwriter, soundtrack composer, and
director of a film all agree that their contributions will be
works made for hire, they will have no rights to terminate
the transfers.

Example
1. Stipulation. Shudderbug has long worked as a
freelance fashion photographer. Tabloid contacts
Shudderbug, offering to hire her to take some photos
of Designer to accompany a tell-all interview to be
published in Tabloid. The parties agree that
Shudderbug will receive $3,000 to spend the morning
taking photos of Designer at Shudderbug's studio.
They also agree in writing that the photos will be
works made for hire. Shudderbug has never worked
for Tabloid before. After seeing how well the photos
come out, Shudderbug wants to be the author.
Shudderbug argues that the photos cannot be works

made for hire because Shudderbug was never an


employee. Are the photos works made for hire?
Would it make a difference if Designer had simply
commissioned the photos to hang in Designer's living
room with a similar agreement that the photos will be
works made for hire?

Explanation
1. The photos are works made for hire. They do not fall
into the first category of works made for hire (works
by employees within the scope of employment), but
some parties may effectively stipulate that a work is
made for hire. The work must be specially
commissioned or ordered, fall into one of the
specified categories, and be subject to a written
agreement that it will be a work made for hire. All
three requirements are met here. Tabloid specially
commissioned the work. The work falls within one of
the categories: a contribution to a collective work (as
a photo to be included in an edition of Tabloid). The
parties signed the requisite agreement.
It would not be a work made for hire if it had been
commissioned by Designer to hang on the wall. Even
though the first and third requirements would have
been met (specially commissioned and subject to a
signed stipulation), the photo would not fall into any
of the nine specific categories. It would not be a
work made for hire. A court, however, might construe
the agreement as transferring ownership of the
copyright to Designer.

Example
1. Hollywood is a place where a man can get stabbed
in the back while climbing a ladder. Studio
commissions Faulkner to write a screenplay for Meet
the Snopes. The agreement is informal and oral.
Before too long, Faulkner hands over the text and
Studio hands over the check. Just as production is to

begin on the film, Faulkner's attorney contacts Studio.


Faulker was not an employee. The screenplay was
not a work made for hire. Faulkner, as author, owns
the copyright, and is offering to grant permission for
Studio to make the film and distribute itfor a fee.
Has Studio bought nothing more than a piece of paper
because they did not get the copyright?

Explanation

1. Faulkner does own the copyright, but Studio will


have an implied license to use the screenplay as
contemplated by the parties. Where the parties
neglect to address copyright ownership in the written
agreement, the hiring party will get an implied,
nonexclusive license to use the work. Studio can
make the film and distribute it without permission
from Faulkner.
Uses beyond the parties' implied agreement,
however, would infringe the copyright. This would
depend on a showing of what the parties intended.
Faulkner could argue that Studio would infringe if it
made a sequel, or a novelization, or a Broadway
musical. In addition, Faulkner would have the right to
grant licenses to others. Studio should have
addressed the ownership of copyright in the contract.
The implied license rule will help it, but getting a
clear assignment of copyright in the contract is much
better.

Examples
1. When I nod my head, hit it. Celebrity decides to
enter the market for photos of Celebrity. She
meticulously dresses herself and arranges furniture
and artwork for a backdrop. She sets a camera on a
tripod, picks a filter, sets the lighting, frames a shot,
and focuses the camera. She asks Friendly Neighbor
to help. Celebrity poses and gives a signal to
Neighbor, who pushes the button to take the picture.

Neighbor subsequently becomes less friendly and


claims that the photo's copyright belongs to Neighbor
or that both Neighbor and Celebrity are joint authors.
Who owns the copyright?
2. Muses. Poet writes a series of poems about spring.
Poet assigns the copyrights in the poems to Publisher
for an agreed sum. Publisher commissions Musician
to set the poems to music. Musician does so, resulting
in a number of popular songs. When Poet hears how
much revenue the songs are earning, she demands a
share. She argues that the songs are joint works and
that Poet is a joint author, entitled to a share of the
profits. Are the songs joint works?
3. Second thoughts. Serving a lengthy sentence for
stock fraud, Aaron decides to tell his story to the
public. He contacts a friendly journalist, Roswell.
They decide to have Aaron do a tell-all interview.
They discuss the points they want to make and the
effect they seek on the audience. They also discuss
the role each will play, both in planning and
execution. Aaron thinks of a sympathetic way to
present his tale. Roswell thinks up lengthy questions
that both serve as background and paint Aaron in a
good light. They meet to discuss and revise their
respective contributions. They then conduct the
interview, recorded by a video recorder set up by
Roswell. Everything goes according to plan, and they
get precisely the interview they sought. But Aaron
then rethinks his original plan and decides he would
be better off remaining silent. Aaron claims
authorship of the work and forbids Roswell from
making copies, broadcasting the interview, or doing
anything else that falls within the copyright holder's
exclusive rights. Does Aaron have the exclusive
rights in the work?
4. Separate ways. Zach and Cody write a musical
together, hoping for a Broadway hit. Their

relationship sours. Zach is still seeking investors,


when he learns that Cody has freely permitted
various troupes to perform the work. Commercial
opportunities fade for a work that is no longer new.
Are the troupes liable for performing the work
without Zach's permission? Is Cody liable to Zach for
infringement?

Explanations

1. The copyright belongs to Celebrity. In deciding


authorship, courts consider such factors as who
contributes creative expression, who controls the
creation of the work, who makes the creative
decisions, and who third parties would consider the
author. Celebrity made all the artistic and technical
decisions in producing the image. Neighbor played a
purely mechanical role, hitting the button on cue from
Celebrity.
For the same reason, Neighbor does not qualify as
a joint author. Under the standards most courts apply,
joint authorship requires (1) that each author
contribute copyrightable expression and (2) that the
joint authors intend to be joint authors. Neighbor
meets neither requirement. Neighbor simply pushed a
button on cue, without contributing any original
creative expression. Celebrity did not show any
intent to make Neighbor a joint author. So Celebrity
alone owns the copyright.
2. The songs are not joint works, even though they use
Poet's creative expression. As courts now apply the
rule, joint work status requires intent on the part of
all authors, at the time of their respective
contributions, to create a joint work. When Poet
wrote her poems, she intended to create poems. The
songs are musical works, incorporating preexisting
material from Poet's poems. Had Poet not sold the
copyright, making the songs, selling them, or

performing them publicly would have infringed her


copyright. But she sold the copyright to Publisher,
who accordingly has the exclusive rights to make
copies of the poems, adapt them, or perform them
publicly.
3. Aaron is an author, but not the only one. Aaron and
Roswell are joint authors. Each had the requisite
intent to be a joint author and contributed
copyrightable expression. They are co-owners of the
copyright. Either can exercise the exclusive rights of
the copyright owner without the permission of the
other. Accordingly, Roswell can make copies,
broadcast the tape, or do anything else without
infringing Aaron's copyright.
Not every interview would be a joint work. There
are several possible permutations. Depending on the
roles the parties played, one or the other could be the
author. An interview could even be a compilation of
separate individual works.
4. With a joint work, either joint author may authorize
others to use the work. The joint author need only
account to the other joint authors for a share of the
profits. So Cody could independently authorize the
troupes to perform the work. Zach's permission is not
necessary. Neither the troupes nor Cody is liable for
infringement. Cody must account to Zach for a share
of the profits, but there were none to share. Failing to
protect a joint author's ability to exploit a work is not
copyright infringement. See Severe Records LLC v.
Rich, No. 09-6175 (6th Cir. 2011). Joint authors are
well advised to have a contract covering their
relationship. Otherwise, each may be at the mercy of
the other.

Examples

1. Collective work or derivative work? Jarvis provides


a group of photographic images that K2 uses in
advertising. After the parties fall out, K2 continues to
use the images in making a collage. The collage
shrinks, expands, and overlays the images in creative
ways. K2 argues that it has the right to do so as the
holder of the copyright in the collective work, the
group of images (even if Jarvis has the copyright in
the individual images). Does K2 have that right?
2. Shorties. Here's a roundup of all the rules. Who
owns the copyright?
a. Jada, a freelance writer, writes a history of
Gown Town, using the computer and historical
records in the town library.
b. Same, except Jada is a historian employed by
Gown Town, assigned to write the book.
c. Same, except Jada is a freelance historian,
commissioned by Gown Town to write its
history for a lump sum, with free rein on how,
when, and where to proceed (and no health or
pension benefits). To everyone's surprise, Edur
Studio offers millions for the movie rights to the
book.
d. Same, except Jada and Gown Town sign a
contract providing that the copyright will
belong to Gown Town.
e. Davion, a freelance composer working in
Hawaii, writes the score for the movie. His
contract with Edur Studio provides that the
score will be a work made for hire, but Davion
is his own boss, not an employee of Edur
Studio.
f. Edi compiles Best Short Stories of 2006, with
the permission of the copyright holders in the
various stories.
g. Bim and Bam, independent researchers, work
closely together as equals in writing a study of

the U.S. National Park system.


h. Same, except Bim and Bam are employees of
Gorp Incorporated.
i. Same, except Bim and Bam do the work as
employees of the U.S. Park Service, a federal
agency.

Explanations
1. The collage is a derivative work, not a collective
work, so the collective work right to make a revision
of the work does not apply. See Jarvis v. K2, 486
F.3d 526 (9th Cir. 2007). A work is only a collective
work if the individual works remain unintegrated
and disparate, and here they were combined
together into a new work. The author of a collective
work does not have the right to prepare derivative
works based on the individual works.
2. a. Jada, as the author, would own the copyright.
Whether she used facilities of others to create
the work is irrelevant.
b. Gown Town is deemed the author and owns the
copyright, where Jada created the work as an
employee within the scope of her employment.
Note that Jada would own the copyright if the
work was outside the scope of her
employment, such as if she was a judge
employed by the town and completed the
project on her own time and initiative.
c. Jada would be the author. She is not an
employee of Gown Town, so it is not a work
made for hire, even though Gown Town
commissioned it and paid for it. Gown Town
would presumably get an implied license to
make contemplated uses of the work, such as
printing copies for local distribution, but Jada
would own the copyright, including the ability
to sell the movie rights.

d. The copyright would initially belong to the


author, Jada, but it would transfer as agreed to
Gown Town. This illustrates the practical point
that parties are well advised to expressly
address copyright ownership in the contract.
e. It will be a work made for hire, so Edur Studio
is the author and owns the copyright. This
illustrates the second category of works made
for hire: specially commissioned works that
fall into specified categories (one of which is
a part of a motion picture or other audiovisual
work, applicable here), where the parties sign
an agreement designating it to be a work made
for hire, as they did here. There need be no
employee relationship for this category to
apply.
f. Edi holds the copyright in Best Short Stories of
2006, even though Edi did not write any of the
stories. It is a collective work: a work, such
as a periodical issue, anthology, or
encyclopedia, in which a number of
contributions, constituting separate and
independent works in themselves, are
assembled into a collective whole. 17 U.S.C.
101. But that does not give Edi the copyright
in the various stories. Rather, Edi's copyright
in the collective work comprises the privilege
of reproducing and distributing the contribution
as part of that particular collective work, any
revision of that collective work, and any later
collective work in the same series. 17 U.S.C.
201(c).
g. Bim and Bam are joint authors. Each may
license the work independently but must
account to the other for profits. Bim could
authorize the sale of the book. Bim would have
to pay a share of the profits (if any) to Bam.

h. If they created the work as employees working


within the scope of their employment, the
author and copyright owner would be the
employer, Gorp Incorporated.
i. Thrown in for review: No one would own the
copyright. There is no copyright in a work
created by an employee of the U.S. government
working within the scope of employment.

Examples
1. Scarlet's letter. Scarlet writes a letter to Red, musing
at length about philosophy and relating a number of
amusing incidents, using her considerable wit and
wisdom. Red then offers to sell the letter to Ashy.
Ashy is aware that sale of an object does not convey
the copyright in a work. Ashy decides to make sure
that the contract clearly conveys the copyright. Ashy
and Red sign a sales contract, agreeing that Red
conveys ownership of both the letter and the
copyright in the letter. Ashy pays the agreed price.
Who owns the copyright in the letter? What if all this
occurred in 1966?
2. Services rendered. Sculptor, a self-employed artist,
agrees to create a sculpture for Mogul's garden.
Mogul supplies a large block of stone. Sculptor, over
several days, uses various tools to fashion various
abstract geometric forms in the stone. Mogul is
delighted with the result and hands over the agreed
fee. Sculptor then prepares to load the sculpture into
a truck, much to Mogul's dismay. Sculptor claims
ownership of the sculpture, on the grounds that the
sculpture was not a work made for hire and they did
not agree that the copyright would belong to Mogul.
Who owns the sculpture?
3. My music. Boutique Owner purchases a CD of songs

written and performed by the group Dansel. Boutique


Owner likes the CD so much that she plays it several
times a day in her boutique. She then hears from the
owner of the copyright in the songs, who claims that
Boutique Owner is infringing the copyright owner's
exclusive right to perform the songs in public.
Boutique Owner is dumbfounded. Does she need
permission to play a CD she owns?
4. Your tape, my music. Forward, a music enthusiast,
hears the Destroyers play at a blues bar. Impressed,
he invites them to record a demo tape of their songs
at a studio, all expenses paid. The demo helps the
Destroyers get a record deal, and they agree to let
Forward keep the tape for his own enjoyment. Years
later, the Destroyers now famous, Forward decides
to reproduce his tape and sell copies to the public.
May he?
5. Ambiguous question. If the Pink Panther stole the
demo tape and sold it, would the Pink Panther be
liable to Forward or to the Destroyers?

Explanations
1. Scarlet owns the copyright in the letter. Scarlet gave
Red the letter but did not give Red the copyright in
the letter. Transfer of ownership of a copy of a work
(even when the copy is the original form of the work)
does not convey the copyright in the work. Scarlet
did not convey the copyright to Red, so Scarlet
retains the copyright. The fact that Red agreed to
convey the copyright to Ashy does not help Ashy;
Red cannot convey something Red does not own or
have power to transfer. Scarlet owns the copyright,
and Ashy is left with a breach of contract action
against Red for failing to convey the copyright Red
promised to Ashy.
Had this occurred in 1966, the result might be
different. Before 1978, state law governed copyright

in unpublished works. Some state courts would hold


that transfer of the work might include an implicit
transfer of the copyright (depending on the intent and
conduct of the parties). A court might hold that in
sending the letter, the author implicitly transferred the
copyright. Other courts might well hold that the
author intended to keep the copyright, because there
was no expectation that the recipient would publish
the letter.
2. The sculpture belongs to Mogul. The copyright
belongs to Sculptor because the work was not a work
made for hire and the parties did not agree to a
transfer of the copyright. But ownership of the
sculpture, a physical object, is entirely separate.
Since Sculptor agreed to make it for Mogul's garden,
using materials supplied by Mogul, property and
contract law likely would deem the sculpture to
belong to Mogul, so Sculptor does not have the right
to take the sculpture away.
3. This problem contains some preview of material
later in the book. Boutique Owner does need
authorization from the copyright holder (or from
some provision of the Copyright Act, as the next
chapter discusses) to play the CD publicly. Boutique
Owner bought the CD; she did not buy the copyright
or receive a license of any of the exclusive rights.
The copyright owner in the musical work has the
exclusive right to perform the work publicly, which
includes playing the songs publicly on a CD player.
Boutique Owner can, however, play the songs
privately without permission. Ownership of a copy of
the work does not give the owner unlimited rights to
use that copy (as the other chapters discuss in more
detail), in particular under the first sale and fair use
provisions.
4. Forward owns the tape, but the Destroyers own the
copyright to their music and, assuming they

controlled the session, to the sound recording. If


Forward makes copies and distributes them, he
would infringe both copyrights. See Forward v.
Thorogood, 985 F.2d 604 (1st Cir. 1993).
5. Both. Pink Panther would be liable to Forward for
stealing his physical property and selling it
(conversion) and to the Destroyers for distributing a
copy (that he does not own, so first sale does not
apply, as discussed later in the book) of their
copyrighted work to the public (copyright
infringement).
Chapter 8: copyright notice, registration, and deposit

Examples
1. First folio. In 1966, Esen self-published a thriller,
The Confounded. She had 100 copies printed and
sold them through a bookstore in Denver. Because
Esen knew nothing of copyright law, she did not
include a copyright notice on any copies. The issue
was never raised until 2006. That year, the movie
Confabulated was released. Esen saw it and
immediately realized that the script was taken
practically verbatim from her book. The producers
admit the copying but claim the book was not under
copyright. Esen now has several arguments. Esen
argues that she did not intend to put the book into the
public domain and that the requirement of formalities
was abolished in 1989. Finally, at the least, she can
use restoration to get her copyright back. Will these
arguments work?
2. Second folio. In 1986, Esen self-published her
second thriller, Children of the Confounded. Again,
she published a mere 100 copies without a copyright

notice and sold them through a Denver bookstore.


Now it is 2006. Given the success of Confabulated,
publishers and producers are quite interested in the
rights to Children of the Confounded. Does Esen
have a copyright?
3. Third folio. In 1996, Esen self-published
Grandchildren of the Confounded. 100 copies, no
copyright notice, sold in Denver. Does Esen have a
copyright?
4. Published by another. In 1966, Noah wrote his
thriller, The Unpublished. Sure enough, Noah was
unable to find a publisher for the book, and his ef forts
at self-publishing failed, but he managed to sell the
movie rights. The moviemakers promised to include
proper notices of copyright on the work when
distributedbut did not. The film was very true to
Noah's book. It had wide distribution in 1968. Noah
contends that the book was not published, on several
grounds. First, the showing of the movie is a
performance, which is not a publication. Second, the
distribu tion without notice violated the contract.
Third, the movie was made public, not the book.
What result? What result if this had occurred in
1986? In 1999?
5. And the copyright goes to . Each year, the
Academy of Motion Picture Arts and Sciences
awards various Academy Awards (Best Picture, Best
Director, etc.). The awards are given at a public
ceremony, and each winner gets an Oscar statuette.
The winners frequently hold them up to be viewed by
photographers, the admiring public, and their envious
colleagues. From 1929 to 1941, the Oscars were
handed out without a copyright notice. After that, a
notice was put on every statuette. The happy
recipients generally kept their Oscars. The estate of
one winner sold his, but it was eventually bought by
the Academy.

Creative Choices has the clever idea to make Oscar


statuettes for companies to give to Best Salesman and
Best In-House Attorney in a Supporting Role. When
the Academy sues, Creative contends that Oscar went
into the public domain by publication without notice.
He has been on TV, has appeared in many newspaper
photos, and was handed out year after year from 1929
to 1941. What result?
6. The chosen. The Church of the Notion was a small,
cohesive group, trying to grow. In 1966, the group's
leader wrote a pamphlet explaining some of their
beliefs. The members spent much time combing the
streets of Los Angeles for sympathetic souls. After
engaging thousands of passers-by, members
distributed copies of the pamphlet to about 100. The
members tried to select people who seemed open to
their beliefs and willing to look at the pamphlet.
Some of the members split from the church and
formed a rival group. They took a copy of the
pamphlet. After editing it to reflect some
philosophical differences, the splinter group printed
hundreds of copies to use in their own efforts. They
contend that there was no copyright in the pamphlet
because it had not been published. Had it?
7. Proper form. Allie wrote a play, Ultimate Effect, in
1965. She was working as an employee of the
Theater Theater, so the play was a work made for
hire. Theater Theater published the play that year
with a copyright notice reading Allie 1965. Was
the copyright notice correct?
8. Bad date. In 1980, Allie was working as a freelance
playwright. She wrote Affect and had several
hundred copies printed. Modestly thinking she would
not undertake publication for a year or two, she had
the copyright notice read Allie 1982. But word
of the play spread. At the urging of friends, she sold
the copies to a local bookstore, which quickly sold

them to the public. Was the copyright notice correct?


Is there anything she could have done around that
time?
9. Type A sees typo? The perfectionist Boss of Squarer
Records personally examines a CD from his
company's most popular singer, Rhoda Rooner.
Rooner wrote all the music and supervised the
recordings. The CD case includes the CD embodying
the recording, along with a booklet with artwork, the
lyrics to the music, and information about Rooner.
Under Rooner's contract, the copyrights in all her
work transfer to Squarer Records. The copyright
notice on the CD and on the booklet reads: 2002
Squarer Records. First, Boss wonders, shouldn't
Rooner's name be included? Second, why does the
notice have both and ?
10. All together now. In 2006, Otter remembers a story
she had published back in 1964. She had submitted
the story to Trail Tales magazine, which agreed to
publish it. Now she wonders if she owns the
copyright to the story. She digs out her copy of the
magazine and is horrified to see that the story was
printed without an accompanying copyright notice.
There was a copyright notice on the title page of the
magazine but none on the individual pieces. Has her
story been in the public domain ever since?

Explanations
1. Esen's book is not under copyright because she
published without copyright notice during the time the
harsh provisions of the 1909 Act were in effect. Her
intent is irrelevant. No intent to put the work in the
public domain is required. The fact that she
published only 100 copies will not save her. Under
the 1909 Act, where the proprietor sought to comply,
the omission by accident or mistake of the
prescribed notice from a particular copy or copies

did not invalidate the copyright, but she had made no


attempt to comply, so the provision does not apply to
her case. Even if she had, omission of the notice from
100 copies may be too much to qualify as particular
copy or copies.
The abolition of the formality requirement in 1989
does not affect her, because it did not apply
retroactively to works published before that time.
Nor does restoration help her, because it applies only
to copyrights owned by foreign authors.
2. This time, Esen published without notice during the
decennial period governed by the 1976 Act's initial
notice provisions. Under the 1976 Act, there is no
loss of copyright if notice was omitted from no more
than a relatively small number of copies or
phonorecords distributed to the public. The question
here is whether the 100 copies were a relatively
small number. As compared to books generally, 100
copies are not too many, so a court might hold that it
was relatively small. On the other hand, it was all
the copies she had printed, so a court might hold that
it was not relatively small.
The other savings provisions would not help her.
She did not register and try to fix the missing notices.
Nor did a licensee omit the notice in violation of
instructions from her.
3. This time, Esen published without notice during the
time governed by the post-March 1, 1989, rules.
Copyright notice on published copies is no longer a
condition for copyright protection, so she has her
copyright. She may be subject to the innocent
infringer defense, but her rights generally are not
affected.
4. Noah did not publish his novel as such, but a movie
was published with his permission that contained
much of the creative expression in Noah's novel.
Most courts would hold that constitutes publication

of Noah's novel. Because this occurred in 1966, he


would potentially lose his copyright.
One wrinkle is that the agreement required the
moviemakers to include a proper copyright notice,
and they failed to do that. The law before the 1976
Act was unclear. Some courts may hold in Noah's
favor. The publication was unauthorized and
therefore would not divest his copyright. Had it
occurred in 1986, the rule would be clear that there
was no divestiture, under 17 U.S.C. 405. In 1999,
there was no loss of copyright by publication in any
case, so it would not matter.
5. The court held that there was no divesting
publication. See Academy of Motion Picture Arts &
Sciences v. Creative House Promotions, 944 F.2d
1446 (9th Cir. 1991). The Oscars were distributed to
the winners and shown to news photographers
without a copyright notice, but the distribution was a
limited distribution, not to the general public. They
were given to winners of the Academy Awards.
When one went on auction, the Academy eventually
managed to buy it. The display was also somewhat
limited. Unlike public display of a sculpture, with no
limits on copying, the three-dimensional statuettes
were made available to photographers, who made
two-dimensional photos. The court held that did not
permit unrestricted copying (although one wonders
how the defendant could then have made the
allegedly infringing statuettes).
6. There probably was publication without notice here
and loss of copyright under the 1909 Act rule. The
copyright owners would argue that it was a limited
publication, which would not divest copyright.
Rather than unrestricted public distribution, they
made the work available only to selected members of
the public, for the specific purpose of interesting
them in the pamphlet. When copies of the pamphlet

were given to any member of the public who seemed


receptive, however, that would go well beyond a
limited publication.
7. The notice was not correct. Allie was the author, but
the copyright no tice was required to show the name
of the copyright owner. She had been an employee of
Theater Theater, so it owned the copyright. A court
could hold that the invalid notice meant the work was
published without notice and therefore was not under
copyright. Note that under the 1976 Act, an error in
the name did not invalidate the copyright.
8. Here Allie published without notice under the 1976
Act's original rules. She had several hundred copies
printed and sold, which was probably too many to
qualify as a relatively small number, but she could
have used the other savings provision by registering
the work within five years and taking reasonable
steps to correct the omission.
9. The compact disc is a phonorecord embodying both
the musical work and the sound recording. The
booklet is a copy of the musical work (at least the
lyrics of the music), as well as the artwork, and
perhaps a literary work (the other info). So use of
both symbols is appropriate, for copy and for
phonorecord.
10. Otter still has her copyright. For collective works, a
single copyright notice on the copyright page was
sufficient.

Example
1. Restoration. In 1965, Gen agreed to have his
dissertation published in Japan. The publisher did not
include a copyright notice. Gen's dissertation is still
under copyright in Japan. Is there anything Gen can
do to recover his U.S. copyright? What if the
dissertation had been first published in the United
States without the requisite notice? Or what if it had

been published without notice in 1920?

Explanation

1. The restoration provisions would give Gen his


copyright back. To maximize his ability to enforce the
copyright, Gen could file a Notice of Intent to
Enforce with the Copyright Office, which would limit
the ability of reliance parties to continue acts that
would infringe Gen's copyright.
Had it been first published in the United States,
restoration would not apply. It applies only if the
work is first published in an eligible country (a
country other than the United States that is party to
one of various copyright-related treaties). Had it
been published in 1920, restoration would also be
inapplicable. Restoration gives the work only the
term it would have had. Works published before
1923 are out of copyright.

Example
1. Keeping a lid on it. Spakester writes a humorous
five-act play. He distributes copies to a number of
local writers. They all agree that the play will be a
huge hit. One friend suggests that Spakester register
the copyright in the play. Spakester responds that he
will wait until the play is published. Spakester
believes that he has no copyright until the play is
published and that registering before then would not
give him any benefits. Moreover, he figures, until the
play is published or produced on stage, no one could
possibly infringe. Would Spakester get any benefit
from registering the copyright?

Explanation

1. Spakester would benefit from registering the


copyright. He had a copyright as soon as the work
was fixed in tangible form. Works may be registered

whether published or not. His copyright could


certainly be infringed before publication or
production. Several copies are already circulating
among writers, who may pass them on to others. The
benefit of registration would be that if the copyright
is infringed, the remedies available may be greater.
Statutory damages and attorney's fees may be
awarded only for infringement of registered
copyrights. In addition, registration and deposit
provide some evidence that he wrote the work by the
date of registration, which would compare favorably
against an infringing author who denies copying the
work.

Example
1. Smitten with code. Alga registers the copyright in her
computer program, a useful piece of software for
designing buildings. Over the next few years, she
continues to test and adapt the program. A copy of the
latest version is somehow purloined from her laptop
and passed on to Smite Architects, which make more
copies and permits several of its architects to make
use of the software. Alga is pleased that she took the
step of registering the program. Because it was
registered at the time of the infringement, she may get
attorney's fees and statutory damages. In addition, she
need not wait to register before filing her
infringement action. Any problem?

Explanation

1. Alga may have a problem. She registered and


deposited one version of the computer program. She
then continued to test and adapt the program. It may
well be that the version that was infringed was
sufficiently different that it was a separate derivative
work not registered by Alga.
The effect would be that Alga could still sue for
infringement, but infringement of an unregistered

work. She would have to register before suing and


would not be eligible for attorney's fees and statutory
damages.
One twist here is that the work was a computer
program. The deposit rules permit deposit of limited
portions of computer programs, so maybe the
portions deposited were not changed. The question
would then be whether the original registration
would be sufficient.
Chapter 9 Duration of copyright

Examples
1. No starter. Azure wrote False Start, a novel, in
1960. She quickly published, not even pausing to put
1960 Azure on published copies. When does her
copyright begin and end?
2. A little more careful. Azra wrote Twenty-Eight Years
of Solitude, an epic poem, in 1960. He meticulously
put 1960 Azra on every published copy. Then he
went into advertising and forgot about the work.
When does his copy right begin and end? What result
if he had published the work in 1970?
3. Belt and suspenders. Nevaeh wrote Four Score and
Fifteen Years Ago, a ballad, in 1960. She made sure
copyright notices appeared where required. She
registered the work and duly filed a renewal
certificate in 1988. When does her copyright term
begin and end?
4. Portrait of the artist as a young man. In 1960, Ellis
published a superhero comic book, Invisible Man.
He included a copyright notice, thereby securing
federal copyright in the work. He then sold the
copyright to Chilton Publishing, along with an
assignment of the renewal rights. During the last year
of the initial 28-year term, Chilton is about to file a
renewal certificate when Ellis objects. The

assignment of renewal rights is not enforceable, he


argues, because the whole purpose of renewal is to
give the author his copyright backand prevent
struggling young artists from irrevocably signing
away their rights.
a. Who owns the rights to the renewal term?
b. What if Ellis had died and his heirs were
seeking the rights? If Chilton had made a movie
based on the book, would it retain the right to
keep showing the movie?
5. Life is short; copyright is long. In 2000, Miranda
wrote down the choreography of her dance, Trailer.
She published the work without including a notice of
copyright. She never registered the copyright or filed
a renewal certificate.
a. When would her copyright begin and end?
Would it make a difference if the work was
never published? Would it make a difference if
the author was not identified, making it an
anonymous or pseu donymous work?
b. Suppose the dance was a work made for hire,
so that the author and copyright owner was her
employer, Hurricane Dance Co. When would
the copyright expire?
6. Alternate universe. Suppose that, rather than life plus
70, the basic term of copyright was life of the author.
How would that change things?
7. The dog that did not bark. Arthur Conan Doyle's
stories featuring Sherlock Holmes were variously
published from 1887 to 1927. The last ten were
published after 1922 and are therefore still under
copyright. The earlier stories are no longer under
copyright. Would someone need permission from the
copyright owner to create new works with the
character of Sherlock Holmes? Would it matter if the
character changed somewhat in the final ten stories?

Explanations
1. Under the 1909 Act in effect in 1960, when she
created the work, she had state law copyright
protection. When she published without notice,
however, she put the work into the public domain,
meaning she had neither state nor copyright
protection. This example shows how the subject of
this chapter, duration of copyright, often depends on
the formalities rules discussed earlier.
2. Under the 1909 Act in effect in 1960, Azra secured
the initial 28-year term by publishing with notice. But
he did not file for a renewal certificate, which was
necessary to get the renewal term, so his copyright
term began in 1960 and ended in 1988.
Had he published in 1970, the result would be
different. As a result of the 1992 amendments, filing
for renewal is not necessary for works copyrighted
after 1963. So he would get an effective term of 95
years (28-year initial term plus 67-year renewal
term, comprised of 28 years un der 1909 Act,
extended by 19 years in 1976, and another 20 years
in 1998). 1970 + 95 = 2065.
3. Neveah got her copyright in 1960 by publishing with
notice and duly renewed, so she would get an
effective term of 95 years (28-year initial term plus
67-year extended renewal term). 1960 + 95 = 2055.
4. a. Ellis cannot get the renewal term back.
Notwithstanding the policy underlying
renewal, Fred Fisher Music held that
assignments of renewal rights are enforceable.
But all is not lost. As discussed later in the
book, Ellis would have rights under 304 to
terminate the transfer and get his copyright
back, effective 56 years into the term of the
copyright. 1960 + 56 = 2016. He would then
get the last 39 years of the extended renewal

term. (If he missed in 2016, he could terminate


effective 2035.)
b. Had Ellis died, the result would be different.
Under Miller Music, if the author dies before
the renewal term vests, an assignment of rights
is not effective and the heirs have the right to
the renewal term. All rights under the copyright
would belong to Ellis's heirs. Had Chilton
made a movie based on the book, it would no
longer be able to show the movie (which
would infringe the public performance right) or
make copies of it (which would infringe the
reproduction right) or do anything else that
would infringe the copyright.
5. a. The 302 rules for post-1977 works would
apply. Miranda's copyright term begins when
the work is fixed in tangible form and would
last for her life plus 70 years. If she died in
2040, for example, the copyright would endure
until 2130. Whether the work was published or
not makes no difference. Were it an anonymous
or pseudonymous work, the term would be 95
years, lasting until 2095.
b. If it were a work made for hire, her employer
would own the copyright, with a term of 95
years.
6. Under existing rules, works published after 1922 are
likely to remain under copyright. Works later than
1950, for example, may be under copyright until
2045. Under the copyright-for-life rule, works would
frequently pass into the public domain. Authors,
unlike copyright, reach the end of their term with
regularity. Such a rule would also yield quite
dramatic results. Each time a noted author passed
away, her works would become free for all, sort of
an impromptu copyright amnestybut it would also
introduce considerable uncertainty. It would add risk

to making films, for example, because the author of


an underlying work might die during production,
opening the door to other filmmakers.
7. Because the earlier stories are no longer under
copyright, anyone is free to copy them or adapt them,
such as using Sherlock Holmes or his sidekick, Dr.
Watson. There might be infringement if someone
copied creative expression from the stories that are
still under copyright. In those stories, Holmes has
grown to like dogs, and Watson has been twice
married. Copying such later-added elements could be
infringement, provided they qualified as protected
creative expression. But there is no longer copyright
protection in elements from the earlier stories, such
as the characters or plots. See Klinger v. Conan
Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. Ill. 2014).

Example
1. Private correspondence. In 1970, Baz wrote a long
letter to his parents, telling the tale of his first year at
college. His parents left the letter in a desk drawer.
When would the copyright term begin and end?
Would it make a difference if Baz published the letter
in 2002?

Explanation

1. This one implicates the special rule for works


created but not published as of January 1, 1978. Such
works get at least the 302 term for post-1977 works,
so the copyright would last until at least the life of
Baz plus 70. Moreover, such copyrights last until at
least December 31, 2002. If published before
December 31, 2002, the term lasts until at least
December 31, 2047. In this case, those rules would
give few, if any, extra years. If Baz survived until
1978, then his copyright would last until at least 2048

(1978 + 70).

Example
1. Copyright futures. Suppose that in 2018 Congress
again adds 20 years to the term of copyright. Pre1978 works would then have a term of 115 years, and
works dating back to 1922 would remain under
copyright (assuming that formalities such as
publication with notice and renewal had been met).
Would that be constitutional under Eldred? Suppose
instead of lengthening copyright, Congress broadened
it by abolishing fair use or by prohibiting copying
ideas from copyrighted works. Would that be
constitutional under Eldred?

Explanation

1. The reasons Eldred gave for upholding the 20-year


extension of 1998 would probably apply equally to
another 20-year extension in 2018. As to the
Copyright Clause, Eldred essentially held that
Congress's reasons met the low requirements of a
rational basis. One reason (harmonization with other
countries) might not apply to a 115-year term, but the
others would still obtain. The First Amendment
argument would likewise seem similar, where
Congress retained the traditional contours of
copyright while extending the term. In short, Eldred
did not require much of Congress in 1998 and likely
would not in 2018.
Abolishing fair use or prohibiting copying of ideas
would be different. Eldred held that copyright's
restrictions on speech are consistent with the First
Amendment because of copyright's built-in First
Amendment protections, in particular fair use and the
idea-expression dichotomy. If those safeguards were
removed, then stricter scrutiny under the First
Amendment would apply. It is hard to think of any
policies that would support such broad restrictions

on speech.

Examples
1. Unpermit. The PolCon convention brings together
politicians from all parties for nonpartisan panels
discussing matters from campaign strategy to
fundraising to relocation of families. At one public
panel, Senator Stinton discusses her recently released
autobiography. Mower, a filmmaker on the panel,
requests the exclusive right to make a film adapted
from the book, promising any profits to go to charity.
Stinton publicly and clearly agrees to Mower's offer.
Mower starts work on a screenplay but soon learns
that Stinton has authorized another film. Mower
complains, arguing that the film would violate the
exclusive rights granted by Stinton. The transfer of
exclusive rights was invalid, Stinton contends,
because there was no signed writing. Mower
responds that the lack of writing is irrelevant. No one
denies that Stinton gave permission, he argues, so the
usual need for a writing as evidence of the agreement
is unnecessary. What result?
2. Change of heart. Gray phones Leonardo, a gifted
artist. Gray requests permission to include
Leonardo's drawings of human figures in Gray's
anatomy text. Leonardo tells her to go right ahead.
After Gray's book becomes a fixture on every
medical student's bookshelf, Leonardo demands
royalties and threatens to sue. Leonardo does not
deny that he gave permission. Oral permission, he
contends, is insufficient. Since there is no signed
writing, the permission is invalid. Is Leonardo
correct?
3. Not worth the paper it's not written on. Palette
shows her latest painting to Baron, who immediately
is enthralled. The two orally agree that Palette will
sell both the painting and its copyright to Baron for

an agreed sum, immediately paid by Baron. Baron's


art collection is included in a show that tours the
country. Palette's painting becomes renowned. Baron
decides to market posters with reproductions of the
painting. Palette's lawyer contacts Baron, contending
that the copyright was not validly conveyed to Baron.
Was there a valid transfer of copyright ownership?
Suppose instead that Baron purchased the painting
and Palette orally gave him permission to make and
distribute posters that reproduced the painting. Is
such oral permission valid?
4. Transfer of copyright ownership? As the statute
states, a transfer of copyright ownership, other than
by operation of law, is not valid unless an instrument
of conveyance, or a note or memorandum of the
transfer, is in writing and signed by the owner of the
rights conveyed. Which of the following would
require a signed writing?
a. Jot sells Print the copyright to Jot's new novel.
b. Print sells Press the copyright to Jot's novel.
c. Press sells Mag the exclusive right to reprint a
chapter from the novel, with such right limited
to publication in a magazine during December
of that year.
d. Editor phones Potaster and receives permission
to include one of Potaster's sonnets in a
collection of poetry.
e. Jute sells Museum the manuscript to Jute's new
novel.
f. Jape gets a loan from Bank, putting up the
copyright in a software package as collateral.
g. Publisher agrees to print 1,000 copies of
Potaster's book of poetry in exchange for 10
percent of Potaster's sales.
h. Condi gets permission from Ringo to sample
one of his recordings in a song she is recording.
She intends to take a three-second snippet from

Ringo's recording and use it repeatedly as part


of her workand hopes to sell millions of
copies.
5. Sign-off. Newfie Museum purchases a painting from
Artist. Newfie writes a check payable to Artist. The
back of the check reads, By signing this, you
acknowledge that rights to the painting belong to
Newfie. Artist signs the back of the check and
deposits it in his account. Does Newfie now hold the
copyright in the painting (including, for example, the
exclusive right to publish a copy of the painting in a
magazine)?
6. Hypothecation situation. Bank agrees to finance
Houston's new animated film. The parties sign a loan
agreement, in which Houston grants Bank a security
interest in all her equipment, accounts, and general
intangibles, now owned or after-acquired. The legal
definition of general intangibles would include
copyrights. Houston subsequently denies that Bank
has a security interest in the copyrights of a
screenplay and film authored by Houston. The bank,
Houston contends, would have needed a separate
transfer of copyright, specifically identifying the
copyrights, using such words as I hereby transfer
ownership of my copyright, as collateral for the
loan. Are the copyrights collateral for the loan?
7. E-writing? Shiva reads a new play by Russ, Motion
to Remove File from Pile with Forklift, a saga of
wily debtors and ruthless creditors. Shiva e-mails
Russ, clearly requesting exclusive rights to stage the
play in Illinois, promising Russ that her troupe will
do the work justice (and pay him 25 percent of the
ticket sales). He e-mails back: Agreed! Best, Russ.
The play opens in Peoria to rave reviews and full
houses. Just as Shiva is negotiating for a run in
Chicago, she learns that Russ has authorized a
production by a Chicago company, Steppenwolf.

When she threatens to sue, Russ denies that he ever


put the permission in a signed writing, as required for
validity. Shiva offers to show printouts of the e-mail.
She further points out that copies of the e-mail have
been saved on her and Russ's computers and likely
elsewhere, which would be more than sufficient to
fix a work in tangible form. If that's sufficient for the
Constitution (which treats them as Writings of an
author), that should be enough for section 204, she
argues. Will she succeed?
8. Invitation withdrawn. The copyright page of Fitz's
Guide to Linux reads, To help spread the word
about Linux, the author hereby grants permission to
anyone to republish the contents of this book. Fitz
had orally instructed the publisher to include that
statement but never put anything in writing. Thusi
takes Fitz at his word and prints and sells thousands
of copies of the book. Fitz, who retained the
copyright, is enraged that Thusi is profiting from his
generosity and sues Thusi for copyright infringement.
The permission is not valid, Fitz contends, because it
was not signed by Fitz.
9. Policy. Foraste works as a photographer for Brown
University, taking photos that are used in various
Brown publications. Brown has adopted a copyright
policy:
Ownership: It is the University's position that, as a general
premise, ownership of copyrightable property which results from
performance of one's University duties and activities will belong to
the author or originator. This applies to books, art works, software,
etc.

After Foraste leaves his job at Brown, he claims


copyright in all the photos he took. Is the university
policy sufficient to transfer copyright to him?
10. Implied exclusive license? Freelancer orally agrees
to shoot some wildlife footage for Auteur's feature
film. Freelancer spends a couple of weeks camping
and shooting digital video in Alaska, returning with

some great grizzly footage. In exchange for $100,000,


Freelancer hands over several storage discs with the
best footage, which Auteur incorporates into the film.
Auteur is then enraged several months later when she
sees the same footage used in a competing film with
permission of Freelancer. Auteur argues that the
generous fee gave her an implied transfer of the
exclusive right to use the footage in a film. Was there
an implied exclusive license?
11. Hidden masterpiece. Taeto creates a phantasmic
tattoo, stitching a sketch of a snow leopard onto
Becket's forearm. Becket is pleased and hands over
the agreed fee of $400. Taeto then tells Becket, Now
remember not to let anyone take your picture. I hold
the copyright in that tattoo and don't want anyone
making copies of it. Does Taeto own the copyright?
Must Becket cover up when a camera comes out to
protect his family and friends from infringement?
12. Who owns Bob the Tomato? Lyrick Studios and Big
Idea Productions negotiate over a distribution deal
for videos of Big Idea's Veggie Tales, a cartoon
featuring Bob the Tomato and Larry the Cucumber.
The parties exchange faxes, listing both agreed terms
and terms still under discussion. They strike an oral
agreement, under which Lyrick will have the
exclusive license to distribute Veggie Tales. Lyrick
distributes Veggie Tales for some time, until the
relationship deteriorates. Big Idea authorizes another
distributor to take over, whereupon Lyrick sues for
breach of the exclusive license agreement. Is there an
enforceable agreement? If not, is Lyrick itself liable,
for distributing Veggie Tales without authority?
13. Or not to tweet. Twitter's terms of service, which
grant Twitter a nonexclusive license to photographs
uploaded by users. Would that authorize Twitter's
users to reproduce the photos, such as by other media
outlets' using them for news reporting?

Explanations
1. The transfer of exclusive rights was invalid, for lack
of a signed writing. The rule is quite plain: A
transfer of copyright ownership, other than by
operation of law, is not valid unless an instrument of
conveyance, or a note or memorandum of the transfer
is in writing and signed by the owner of the rights
conveyed. Its text includes no exceptions, and courts
have not read any into the statute, so Mower would
not have exclusive rights to make the movie.
2. No writing was necessary, because Gray is not
claiming that there was a transfer of copyright
ownership. If she claimed to have exclusive rights to
use the drawings, that would be a transfer of
copyright ownership (as an exclusive license),
requiring a signed license. But Gray claims only that
Leonardo gave her permission to use the drawings.
That would be a nonexclusive writing, which may be
oral (or even implied). So oral permission is
sufficient. The court must also determine, as a matter
of state contract law, whether the agreement is valid.
3. No valid transfer of copyright ownership occurred. A
transfer of copyright ownership is not valid without a
writing signed by the transferor. Here the parties had
only an oral agreement, so the necessary writing is
absent. Palette still owns the copyright, and Baron
would potentially infringe if he started making and
selling copies of the painting.
The result would be different if Palette had given
Baron oral permission to make and sell copies. If she
did not give him the exclusive right to do so, such
permission would be a nonexclusive license. A
nonexclusive license need not be in writing to be
valid.
4. a. A conveyance of the copyright is a transfer of
copyright ownership and requires a signed

writing for validity.


b. This is also a conveyance of the copyright and
likewise requires a signed writing. The rule is
not limited to a conveyance by the initial
author but applies to any transfer of copyright
ownership.
c. The exclusive license is a transfer of copyright
ownership and requires a signed writing for
validity. The definition of transfer of
copyright ownership explicitly includes the
transfer of an exclusive right, even if there are
limits as to time and place (such as the limits
to publication in a magazine during
December).
d. Permission to reprint the sonnet in a collection
of poetry is not a transfer of copyright
ownership; rather, it is a nonexclusive license,
which does not require a writing for validity.
The permission is nonexclusive because
Potaster could give permission to someone
else to likewise include the sonnet in a
collection of poetry. It would be exclusive only
if Potaster granted permission to publish and
agreed that Potaster could not authorize others
to do the same thing. In other words, the
license is exclusive if it excludes others from
the rights at issue.
e. Here there was a sale of the manuscript, not of
the copyright. Sale of the manuscript is not a
transfer of copyright ownership. Sale of the
manuscript is not a transaction involving the
copyright at all but simply the sale of an
object, so copyright law does not apply.
Rather, contract law governs whether a signed
writing is required (and, under the U.C.C., if
the price is paid, no writing is required for
enforcement of the contract).

f. Putting a copyright up as collateral falls within


the definition of transfer of copyright
ownership as a hypothecation of a
copyright. Accordingly, a signed writing is
required for validity.
g. This is simply a nonexclusive license,
requiring no signed writing. Mainly it is a
contract for printing services, but there is also
a license permitting Publisher to make copies
without infringing.
h. This permission is not exclusive, so it would
not require a signed writing. Of course, Condi
may still have to prove that Ringo agreed, so a
signed writing is a good idea.
5. Newfie probably does not hold the copyright on the
grounds that there was not a sufficient signed writing.
This case is really a matter of contract law and of
interpreting the parties' writing. A note or
memorandum of transfer of copyright need be in no
special form. If the check had read, By signing this,
you acknowledge that the copyright in the painting is
transferred to Newfie, and the author signed it, it
would have been sufficient. But the note or
memorandum must show the parties' intent to transfer
the copyright. Rights to the painting does not
clearly do so; rather, it seems to refer to ownership
of the painting itself. A court likely would not hold it
to be a note or memorandum of transfer of ownership.
Compare Playboy Enters. v. Dumas, 53 F.3d 549 (2d
Cir. 1995).
6. The copyrights are collateral for the loan. Use of
copyrights as collateral is a transfer of copyright
ownership (hypothecation is included in the
definition of transfer of copyright ownership). The
transaction requires a signed writing. The statute
does not require the use of any particular words,
however, rather a writing sufficient to show the

specific grant of rights claimed. If the parties used a


term (general intangibles) commonly understood to
include copyright, that would likely be sufficient.
This is not a case where the parties' writing was too
vague to show that the claimed rights were not
transferred.
7. The case involves a claimed exclusive license, so
there must be a writing signed by Russ for it to be
valid. The question would be whether the e-mails
would be sufficient. Shiva's e-mail clearly set out the
terms of the exclusive license (exclusive rights to
perform the play in Illinois in exchange for 25
percent of the ticket sales). Russ's e-mail shows clear
acceptance (Agreed! Best, Russ.). Is an e-mail a
writing for the purposes of section 204? And did
Russ sign it? The copyright statute does not define
writing. E-mail was not in widespread use when the
provision was enacted in 1976, but the federal ESign
statute provides that a signature, contract, or
other record relating to such transaction may not be
denied legal effect, validity, or enforceability solely
because it is in electronic form. So, provided that
the e-mails otherwise meet the requirements of
section 204, the fact that they are in electronic form
will not deny validity.
8. The permission did not need to be signed. Fitz
granted permission to anyone to republish the
contents of this book. He did not grant exclusive
rights to anyone, so it was a nonexclusive license,
which does not require a signed writing. It was
therefore effective.
9. The court held that the policy was insufficient to
convey the copyright to Foraste. It held that the policy
was not sufficiently clear to show specifically which
rights had been conveyed, because it spoke only of a
general policy, and the specific works referred to
were books, art works, and software, quite different

from the catalog photographs taken by Foraste. See


Foraste v. Brown Univ., 290 F. Supp. 2d 234, 236
(D.R.I. 2003). It lacked the requisite specificity to
meet the requirements of section 204.
With respect to university copyright policies
generally, another problem for employees may be the
requirement of a signature. If, for example, the policy
is adopted by vote of the faculty or by inclusion in an
employee handbook, there may be no actual signature
by the university. Rather, the employee may need to
find a writing signed by the university (such as an
employment contract that incorporates the employee
handbook by reference). A careful employee may
have it spelled out in writing in the employment
contract.
10. Auteur cannot get an implied exclusive license. Cf.
Effects Associates v. Cohen, 908 F.2d 555, 557 (9th
Cir. 1990). A transfer of copyright ownership (which
includes an exclusive license) must be evidenced by
a signed writing to be valid. So such a transfer cannot
be implied from the conduct of the parties. A
nonexclusive license need not be in writing, so courts
can infer a nonexclusive license from conduct. If
Auteur used the footage, a court likely would hold
that Auteur did not infringe because, under the
circumstances, Auteur received implied permission
to use it, but such implied permission would not be
exclusive.
11. This example serves to point out some other rules
that interplay with the writing requirement. Taeto
does own the copyright. The tattoo was not a work
made for hire, and the parties did not assign
ownership, so Taeto is the author and owner of the
copyright. When one party creates the work for
another but retains the copyright, courts are likely to
hold that the hiring party has an implied license to
utilize the work. But that may make little difference

here. Becket does not need Taeto's permission to


wear the tattoo. Under the first sale doctrine
(discussed later in the book), he may publicly display
the work because he is the owner of a lawfully made
copy. He might be concerned that infringement may
occur if others take pictures of the tattoo. A court
could decide that Taeto gave an implied license for
some photos (such as typical family or news photos).
That would be most appropriate if the parties
discussed likely uses of the tattoo before having it
done, but generally speaking, the issue would be
addressed under such doctrines as fair use or de
minimis infringement (both discussed later in the
book). For a discussion of such issues, see Thomas F.
Cotter and Angela M. Mirabole, Written on the
Body: Intellectual Property Rights in Tattoos,
Makeup, and Other Body Art, 10 UCLA Ent. L. Rev.
97 (2003).
12. If this were a contract case, there would probably be
an enforceable contract in which the parties have an
oral agreement and have performed it for a period of
time. But federal copyright law requires a signed
writing for an exclusive license (or other transfer of
copyright ownership) to be effective, so Lyrick
would not have an enforceable exclusive license
agreement. See Lyrick Studios, Inc. v. Big Idea
Prods., 420 F.3d 388 (5th Cir. 2005).
Lyrick would not succeed in enforcing the
agreement. On the next issue, however, Lyrick would
not be liable for unauthorized distribution. From their
oral agreement and conduct, a court would likely find
an implied, nonexclusive license to distribute Veggie
Tales.
13. Permission to Twitter does not give permission to
Twitter's users. If others make use of the photos, they
could be liable for infringement. See Agence France
Presse v. Morel, 769 F. Supp. 2d 295 (S.D.N.Y.

2011).

Example
1. Abandoned? Model railroad enthusiasts use
Jacobsen's copyrighted software to control model
trains. One can visit Jacobsen's website and
download the code by agreeing to the terms of the
Artistic License, which allows most uses but
conditions that permission on proper attribution. A
company downloads the code and incorporates it into
a commercial product without giving any credit to
Jacobsen. The company argues that Jacob sen cannot
sue for copyright infringement, because he has agreed
that anyone can make copies and otherwise use the
software. They may have failed to give attribution,
but that would merely be a breach of the licensing
contract, not copyright infringement. Has Jacobsen
given up his right to sue for copyright infringement by
allowing the world to freely use the code?

Explanation
1. Jacobsen can sue for copyright infringement, because
the permission to use the code is conditioned on
compliance with the license. Jacobsen v. Katzer, 535
F.3d 1373 (2008). The copyright holder can sue for
copyright infringement (on the theory that
unauthorized use beyond the conditions in the license
took the licensee beyond the scope of the
nonexclusive license) and is not limited to an action
for breach of license. Open source licenses are
enforceable contracts, not gifts. They can be a tool to
encourage the use of the subject matter but control the
manner in which it is used.

Examples
1. Stake your claim. Author writes her brilliant novel
and registers her copyright. She signs a contract with
Publisher, transferring the copyright for a payment of

$1 million. A year later, Author signs a contract with


Studio, granting Studio the exclusive right to make a
movie from the book. Studio knows nothing of
Author's agreement with Publisher. Studio records
the contract with the U.S. Copyright Office. Publisher
did not record. Studio makes the film and begins
showing it nationwide. Publisher claims copyright
infringement. Studio claims that it owns the
copyright, having bought it from Author. Publisher
responds that Author had no copyright to sell, having
already sold it to Publisher. Who owns the copyright?
2. File under bogus claims. Entrepreneur holds the
copyright to Soft Granite, a new computer game.
Entrepreneur signs a sales contract with Bolly,
selling the copyright for $200,000. Bolly does not
record the sales contract with the U.S. Copyright
Office. A year later, Soft Granite has become wildly
popular. Entrepreneur delivers a check to Bolly for
$200,000 and states that the copyright still belongs to
Entrepreneur because of Bolly's failure to record the
transfer. Who owns the copyright?
3. Security. Bank is lending $1,000,000 to Music
Licensing, which will put up as collateral its
registered copyrights in some 5,000 songs. Bank fills
out a UCC-1 statement, listing the collateral as all
copyrights owned by Music Licensing. It will cost
Bank a $30 fee to file in the relevant state U.C.C.
office. Bank's lawyer advises that because the rule is
unclear, Bank should also file in the Copyright
Office. On learning that the fees for filing for 5,000
songs will be more than $10,000 dollars, the Bank
resists. What risk does it have if it does not file in the
Copyright Office?

Explanations

1. Because Studio recorded before Publisher, Studio


takes priority. This is true even though Publisher's

agreement came first in time. Publisher should have


recorded its agreement, thereby putting others on
constructive notice of the transfer of copyright.
Publisher has a cause of action against Author but not
against Studio.
2. The copyright belongs to Bolly, pursuant to the
agreement between the parties. Recordation is not
necessary to have a valid transfer of copyright
ownership. Rather, recordation provides protection
against the claims of a subsequent good-faith
purchaser. Here, there is no subsequent good-faith
purchaser. The dispute is between the seller and the
buyerand the seller is bound by their valid
agreement.
3. It is unsettled whether the Bank can perfect its
security interest by filing in the state U.C.C. office or
the federal Copyright Office. Its risk of not filing in
the Copyright Office is that it will not have a
perfected security interest (if the court follows the
rule requiring federal filing for registered
copyrights). That would mean that it would be second
in line if Music Licensing used the copyrights as
collateral for another loan (or simply sold the
copyrights). Moreover, if Music Licensing went into
bankruptcy, Bank's security interest would be wiped
out. This is a risk to consider.
Chapter 12 first sale

Examples
1. Owner? Ada purchased a copy of some music
software, Mister Moon. She clicked to agree to the
standard purchase contract, which provided that she
would get permanent possession of a copy of the
software but that the software company would retain
ownership of the copy. After using the software for a

year, she decided to sell her copy on eBay. Would a


sale violate the copyright owner's exclusive right to
distribute copies?
2. Nongift. UMG Recordings mails promotional CDs of
copyrighted music. Each CD bears this notice: This
CD is the property of the record company and is
licensed to the intended recipient for personal use
only. Acceptance of this CD shall constitute an
agreement to comply with the terms of the license.
Resale or transfer of possession is not allowed and
may be punishable under federal and state laws.
There was no provision for response by the recipient,
such as clicking to agree to the terms of use. If a
recipient sells the CD, is that copyright infringement?
3. Peasgood's Nonsuch. Psystar buys a copy of a Mac
operating system, Mac OS X Snow Leopard, and then
adapts it to run on non-Apple computers and loads
copies on the computers built and sold by Psystar.
With each computer, Psystar included an unopened
copy of Snow Leopard, purchased from Apple. The
Snow Leopard license provides:
This License allows you to install, use and run one (1) copy of the
Apple Software on a single-Apple labeled computer at a time. You
agree not to install, use or run the Apple Software on any nonApple labeled computer, or to enable others to do so.

Does first sale protect Psystar from copyright


infringement?
4. Redigi or not. Redigi allowed users to sell its
authorized music files. The user would upload the
file to Redigi, which would sell it. Does first sale
apply to such digital resales?

Explanations

1. Under the first sale doctrine, the owner of a lawfully


made copy may sell that copy without infringing the
copyright holder's exclusive right to distribute
copies. The software company, however, might argue
that Ada has no first sale rights, because she is not

the owner of a copy. Rather, she has possession of a


copy that belongs to the software company, delivered
along with a license to use it. A number of courts
have accepted this argument, allowing parties to limit
first sale rights by agreement. Some other courts
regard it as a formalism and would hold that where
Ada has paid the price and is entitled to keep the
copy forever, she owns it and is therefore protected
by first sale.
2. In this case, the attempt to limit first sale rights would
not succeed. The recipients did not agree to the terms
and so were not bound by them. The CD was simply
a gift, and the owner, under first sale, could sell it.
See UMG Recordings Inc. v. Augusto, 628 F.3d 1175
(9th Cir. 2011).
3. First sale did not protect Psystar. The transaction was
not deemed a sale, rather a license. Psytar did not
have an unrestricted right to redistribute the copies
that it had acquired. In addition, Psystar made copies
and arguably adapted the work, neither of which
would be authorized by first sale.
4. The court held first sale inapplicable. Capitol
Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640
(S.D.N.Y. 2013). First sale, as the statute says,
applies only to a particular copy or phonorecord
lawfully made under this title. Redigi's service
might offer the functional equivalent of resale, but
customers were not selling their copy; they were
instead sending another copy. The court declined to
judicially rewrite the statute to extend first sale to fit
the digital age, reasoning that the first sale doctrine
was enacted in a world where the ease and speed of
data transfer could not have been imagined. The
court also declined to apply fair use to protect the
service.

Examples
1. Tunes to let. Becky is looking for new employment.
She decides to take advantage of the first sale
doctrine. She buys dozens of popular CDs and goes
into business from her apartment, renting out the CDs
by the day. Does first sale authorize Becky's activity?
2. Going out of business sale. Becky decides to simply
sell all her CDs to the public. Can she do so without
infringing?
3. Audiobooka book or a record? Local Bookie rents
movies and audiobooks, such as a recording of
Stephen Fry reading a Harry Potter book. First sale
authorizes the rental of movies, but with respect to
audiobooks, is Local Bookie covered by first sale,
which does not authorize rental of phonorecords or
computer programs?

Explanations

1. First sale does not authorize Becky to rent out the


CDs. First sale generally does authorize the owner of
a lawfully made copy to dispose of it by sale or
otherwise, which includes rental. But there is an
exception for sound recordings, computer programs,
and musical works: Rental is not authorized.
Otherwise, customers could simply rent the works,
take them home, and make copies without buying the
author's work.
2. The exception to first sale rights for sound
recordings, computer programs, and musical works
applies only to rental. It does not make first sale
inapplicable to sound recordings, computer
programs, and musical works. If Becky sells her CDs
rather than renting them, she is protected by first sale.
People can sell, lend (for free, so it is not rental), and
give away sound recordings, computer programs, and
musical works, despite the limited first sale rights in
such works.

3. The Sixth Circuit held that the record rental exception


does not apply to audiobooks. See Brilliance Audio,
Inc. v. Haights Cross Communications, Inc., 474
F.3d 365 (6th Cir. 2007). The court viewed the
question as whether the exception to first sale
applies to all sound recordings, or only sound
recordings of musical works. From a policy point of
view, one could argue that the same exception should
apply because audiobooks are subject to the same
risk of unauthorized copying as audio recordings of
music. On the other hand, one could argue that
consumers are less likely to compile and trade copies
of stories than music, because stories are more likely
to be listened to just once (though children's books
are a different story). In addition, applying the
exception to all sound recordings would take it
beyond the commercial arena. Rather than trying to
resolve such policy matters, the court relied on the
language of the statute, which refers to the musical
works embodied therein. The court held that the first
sale doctrine applies without triggering the exception
for sound recordings, so businesses may rent
audiobooks without infringing
Chapter 13:
The compulsory license is subject to several
limitations. It is available only if the primary purpose is to
make and distribute copies for private use. It authorizes
the making of a new recording, not simply duplication of
the publicly released recording. It authorizes making a
musical arrangement of the work to adapt it to another
performance, but the arrangement may not change the
basic melody or fundamental character of the work. The
new arrangement shall not be subject to protection as a
derivative work under this title. So a musician may
record and sell a cover version of a copyrighted song but
could infringe if he radically alters the song. He also does

not have a copyright in his new arrangement (although he


may have one in his new sound recording).

Example
1. New wine in old bottles. Lofty composes My New
Minuet and records a version with her string quintet.
The recording succeeds with critics and fans alike
and becomes a best seller in its genre. Lofty then
receives notices from several people, each stating
that the sender intends to use the compulsory license
under section 115 to utilize the work. State which of
the following people could use the compulsory
license (subject to compliance with the notice and fee
requirements):
a. Producer intends to assemble her own quintet
and then record and sell a version of My New
Minuet.
b. Low Budget intends to record directly from
Lofty's recording and sell low-priced copies in
supermarkets.
c. Spieler intends to record another version with
another quintet and use the music as the
background music to a new movie.
d. Smiling Al intends to record and sell a parody
version that uses tin cans rather than violins to
great comic effect.
e. Viola intends to perform the work at Carnegie
Hall.

Explanation

1. a. Producer could use the compulsory license.


This is the typical examplemaking a new
version of a previously released, copyrighted
musical work. Provided Producer complies
with the statutory procedures, Producer does
not infringe by making and distributing the
recording, even without Lofty's permission (or
even if Lofty specifically objected).

b. Low Budget could not use the compulsory


license. The compulsory license does not
authorize duplicating the sound recording
itself, as Low Budget plans. Record companies
cannot use compulsory licenses to copy and
sell each other's recordings. Rather, the license
authorizes the making of a new recording.
c. Spieler could not use the compulsory license.
The compulsory license authorizes only the
making of recordings to distribute to the public
for private usesuch as making CDs to sell in
music stores. It does not authorize other uses,
such as using the song in a movie soundtrack,
in commercials, and so on.
d. Smiling Al could not use the compulsory
license. The compulsory license does not
authorize an arrangement that changes the
fundamental character of the work. Smiling
Al's parody version with tin cans probably
would exceed that limit.
e. Viola could not use the compulsory license.
The compulsory license does not authorize
public performances, but only making and
distributing recordings.

Examples
1. The masked infringer? A building in downtown Los
Angeles is filmed and used as the Second Bank of
Gotham in the film Batman Forever. The architect
sues for copyright infringement. Are the producers
liable? Would it matter if the building was not just an
architectural work but had additional aesthetic
features such that it was also a sculptural work?
2. Hideaway. Jeff designs a unique home, which he
builds nestled in the woods on a large plot of land.
He keeps the drawings, blueprints, and any photos
private so that only a few people have seen his

design. He is dismayed when Architecture Weekly


runs photos of the building. Its photographer had
chartered a small plane. Although trees surrounded
the building, the pilot was able to fly at just the right
angle to let the photographer get pictures of the
building. Is Architecture Weekly protected by section
120?
3. Building? Frank designs and builds a sculpture of a
convoy of soldiers, which is displayed in a public
park. Is the sculpture a buildingmeaning that
anyone can make and distribute images of the
sculpture?

Explanations
1. There is no infringement. The design of the building
is an architectural work, and the building is visible
from a public place. Under section 120, there is no
infringement by the making, distributing, or public
display of pictures, paintings, photographs, or other
pictorial representations of the work. A movie
qualifies as a pictorial representation, so there is no
infringement. This is true even if the building
qualifies as a sculptural work. Many architectural
works would also be sculptural works. A rule that
barred the public from making pictures of buildings
with sculptural features would eviscerate section
120. See Leicester v. Warner Bros., 232 F.3d 1212
(9th Cir. 2000). The court quoted highly relevant
legislative history:
Architecture is a public art form and is enjoyed as such. Millions of
people visit our cities every year and take back home photographs,
posters, and other pictorial representations of prominent works of
architecture as a memory of their trip. Additionally, numerous
scholarly books on architecture are based on the ability to use
photographs of architectural works.

H.R. Rep. 101-735, at 22.


2. The privilege to make and distribute pictures applies
if the building is located in or ordinarily visible
from a public place. The building is not in a public

place. It is visible from a public placecertain


points in the airspace above the building. A court
might hold that is not ordinarily visible but rather
visible only with extraordinary effort. (Although
maybe that is changing in this age of satellite
photographs available online.) If that is the case, then
the limit in section 120 would not apply, and there
would likely be infringement. Fair use would also not
protect such commercial use of an unpublished work.
3. The legislative history indicates that buildings
include places that people enter (such as houses,
temples, or schools), but not structures such as
bridges and highways. People do not enter the
sculpture the way they enter a house. A person who
took a picture of the sculpture would likely be
protected by fair use (discussed in the next
chapter),but someone who made commercial use of
an image of the sculpture might be infringing.
Buildings are an exception to the general rule:
publicly displayed works retain the full protection of
copyright. See Gaylord v. United States, 595 F.3d
1364 (Fed. Cir. 2010).
Chapter 14 fair use

Examples
1. Sweet charity. Touchdown! is a famous, beloved
photo by Snapz. It captures three toddlers deliriously
raising their arms in delight at some unshown
performer. Snapz has earned considerable revenue
from licensing various uses of the photo. He is
surprised to find the photo being used on the front of
Footie chocolate cookie boxes. When Snapz's agent
contacts the seller of Footies cookies, she is
informed that no permission was sought because the
use is considered a fair use. Footie is a nonprofit
company that sells cookies to fund various charitable

activities. Millions of dollars are earned by selling


Footies (with Touchdown! on the front), and all the
money (other than expenses, which are rigorously
minimized) goes to support a number of highly
praiseworthy efforts, such as fighting infectious
disease and aiding those harmed by earthquakes.
Does the use of Touchdown! qualify as fair use?
2. Kopy Kop Kop. Photoshoppe, a commercial copy
shop, makes coursepacks for students at a local
university using reading lists provided by university
instructors. Each coursepack contains several
hundred pages of text from up to ten different sources.
The sources range from textbooks to scholarly
articles to newspaper articles. Most of the sources
are under copyright, but Photoshoppe does not seek
permission or offer to pay licensing fees.
Photoshoppe refuses to seek licenses even when
directly contacted by the various copyright owners.
Other copy shops in the area do seek permission and
pay fees when making such coursepacks.
Photoshoppe, however, takes the position that making
and distributing the coursepacks is protected as fair
use, as a noncommercial educational activity. Does
fair use protect Photoshoppe?
3. Reverse engineering. SoMak sells a popular word
processing program, Word Prefect. Word Prefect is
sold to the public in its object code version, meaning
it is sold in the form in which it is run on a computer
and not the source code form that a software
developer could easily read and modify. Strive, an
engineer, purchases a copy of Word Prefect at a local
office supply store. Strive then prints the object code
version on several hundred sheets of paper. Strive
spends several months studying the object code quite
closely to see how the program functions. Strive then
writes her own word processing program, Sendense.
Strive is very careful only to copy unprotected,

functional aspects of Word Prefect into Sendense.


Her avowed purpose is to win over market
leadership from Word Prefect.
SoMak sues Strive, alleging infringement of the
copyright in Word Prefect. Strive contends that she
cannot have infringed because she copied only
nonprotected elements. She then realizes that she did
make a copyshe printed the program on paperbut
she decides that fair use protects her. Does fair use
apply?
4. Trouble in parodies. Evermore, a ballad written
and sung by Wangelis, is often heard on the radio.
The song tells the tale of a modern Romeo and Juliet,
set to soothing electronic sounds. Smiling Al, a
popular comedian, uses the words and melody of the
song for his recording Mevermore. Al rewrites the
words into an amusing tale of a trip to the Mount
Mevermore, a mound in the Everglades.
Mevermore uses the melody from Evermore but
does not explicitly or implicitly comment on or
criticize Evermore. Rather, the use of the familiar
tune from Evermore makes Mevermore more
marketable. Because listeners know and like the tune,
they are more likely to stay tuned and listen to the
new version. When Wangelis claims infringement,
Smiling Al claims that Mevermore is a parody and
therefore protected under fair use. Does fair use
protect this use?
5. Clips. Trailers Inc. makes movie trailers. When a
movie is released to the public on video, Trailers
gets a copy. It selects certain portions and edits them
to get an entertaining trailer designed to get the
consumers to rent the film. Trailers provides its
trailers to video stores, for a fee, to show to their
customers. Trailers also has customers among online
video rental customers. Sued by the movie companies
for copyright infringement, Trailers argues for fair

use. First, the trailers do not substitute for the


movies. Second, they actually help movie sales by
encouraging rentals. What's next, Trailers contends,
suing the authors of book reviews? Does fair use
protect Trailers?
6. Thumbnails. An Internet search engine helps users
find images on the web. The search engine
automatically browses the web, collecting as many
images as it can. Using both humans and software, it
compiles an index of keywords associated with the
images. If a user types Panda into the search page,
it will return all the pictures it has associated with
the word Panda. It does not show the original
pictures but rather shows thumbnail versions.
Thumbnails are small, low-resolution versions of the
pictures. To view the original, the user can click on
the link and be sent to the page where the original is
found. A photographer who posts original photos on
his site sues for infringement. Fair use?
7. Panned. Critic writes a review of Slidder, a new
detective novel from best-selling author Austen.
Critic makes ten verbatim quotations from the book
of one to four sentences each. The review
convincingly argues that Austen is simply recycling
plotlines and characters from her previous books.
The quotations are carefully selected to support
Critic's argument. Critic's review is printed in
newspapers across the land. Slidder becomes
Austen's first book in years not to make the top of the
best-seller charts. Austen blames Critic and sues for
copyright infringement. She contends that fair use
will not apply, where Critic's use of her very own
words destroyed the market value of the work. Was
demolition fair use?
8. Extraction by copying. Data Gatherer compiles
property information for municipalities. The
municipalities send out forms to their residents, with

various questions about their real property (including


such things as ownership, lenders, residents, use,
renovations, and additions). When the forms come
back, Data Gatherer's employees input them into a
database, which is stored on computers in the
municipal offices and may be accessed by the public
and by municipal employees. Data Gatherer has made
several creative choices about how to organize the
information. The municipalities pay a fee to Data
Gatherer.
A rival compiler sends in workers who download
the entire database and take the copy to their home
office. There, they extract all the information into
their own database. They do not ultimately copy Data
Gatherer's creative arrangement of information, only
the unprotected facts. But Data Gatherer claims
infringement for the first copying, which was done to
extract the information. Infringement or fair use?
9. Purloined letter. The CEO of Megacorp writes a
lengthy, confidential letter to the board of directors
describing in memorable fashion the events leading
up to Megacorp's bankruptcy. The CEO's personal
assistant leaks the letter to Money Money magazine,
in clear breach of the terms of his written
employment contract. Before Money Money goes to
press with an article excerpting much of the letter, the
CEO seeks an injunction. When the magazine argues
fair use, her attorneys respond that fair use cannot
apply where the copy used was obtained illegally.
Should a wrongfully obtained copy be subject to fair
use?
10. Whole lotta copying goin on. Defendant's work is a
video documentary about Elvis Presley, which
incorporated many copyrighted photographs, music
excerpts, and clips from videos. Defendant spent
much time and creativity in finding and selecting
works to use in the documentary. Defendant artfully

edited the documentary to make it an entertaining


account of Presley's career, especially by relying
heavily on the contemporary works. Defendant did
not get permission from the many copyright owners.
Established licensing practices would have permitted
most of the uses, but at a considerable cost in fees.
11. Fair use test? Defendants publish the Seinfeld
Aptitude Test (SAT). The book has multiple-choice,
matching, and short-answer questions on the
characters and incidents in the long-running
television situation comedy Seinfeld. The book, in
effect, takes the various entertaining aspects of the
television program and puts them into book form. As
its creator put it, to capture Seinfeld's flavor in quiz
book fashion. The book does not offer any
independent analysis or criticism of the program, but
it does test the reader/viewer's knowledge.
Seinfelds producers have not made any attempts at
creating their own quiz book. Would defendants
qualify for fair use?
12. Fair use zone. Artist Richard Prince bought several
copies of a book of photographs titled Yes, Rasta.
Prince mounted 41 of the photographs on backer
board and painted over various portions. Prince
displayed his works, collectively called Canal Zone.
The gallery reproduced the works in an exhibition
catalog that it sold. Several of the paintings sold, for
a total well into the millions of dollars. Another
gallery, which had been planning to show the original
photographs, canceled its exhibition. The second
gallery feared the perception that it would be trying
to piggyback on the use of the photos by Prince, a
well-known appropriation artist. Is Prince protected
by fair use?
13. Hoist on their own petard. Flunt, the publisher of
Grumble magazine, is a strong opponent of
presidential candidate Ellery. Flunt's minions create

a two-page cartoon purporting to tell the story of


Ellery's life but actually pushing various outrageous
fictions. Ellery sues for libel but loses because of the
latitude afforded by the First Amendment. Ellery then
sends out thousands of fund-raising letters containing
copies of the scurrilous cartoon to supporters.
Supporters send plenty of money. Flunt, angry at
providing fuel for Ellery's campaign, sues for
copyright infringement for making and distributing
copies of the copyrighted cartoon. Flunt seeks to have
all the funds raised paid over. Is Ellery protected by
fair use?
14. More multiple-choice tests. The Chicago Board of
Education creates a series of standardized multiplechoice
tests. The tests are administered to students
each year to assess their proficiency in various areas.
The board carefully keeps the content of the tests
private so it can reuse the tests. Ms. Brodie, a
teacher, dislikes both the tests (thinking them poorly
drafted and clumsily adapted to the courses students
take) and standardized tests generally. One year, she
takes all the tests administered to several grade
levels of students at her school and distributes copies
to the public. She claims fair use, arguing that making
the tests public is the best way to criticize them and
further the cause of education. Would she qualify for
fair use?
15. File sharing. The company Napster creates and
distributes file-sharing software. Consumers can
download Napster for free. Consumers use Napster's
software to download music from other Napster
users. To get music from others, the Napster user
makes music files available to others. The software
could be used for many things, but by far its most
common use is to trade copyrighted music. Holders
of music and sound recording copyrights sue Napster
for secondary copyright infringement. The music

companies present concrete evidence that Napster


has contributed to a loss of music sales. Napster
contends that home music copying is protected as fair
use, under Sony. Is it?
16. Post and discuss. Freeforall Forum runs a website
devoted to the discussion of topical issues in politics,
culture, and everything else. Freeforall finds articles
of interest from newspapers, magazines, blogs, and
other places. Freeforall posts the entire text, along
with any pictures, on the Freeforall website.
Freeforall gives correct attribution of source but does
not seek permission from the copyright owners.
Freeforall permits any visitor to the website to post
comments. Freeforall's site gains in popularity each
month, with more visitors and more posted
comments. Articles are often available on Freeforall
shortly after their original publication and are left
there permanently for reference. Its website reflects
extremely robust discussion about the issues at every
level of argument, from philosophical analysis all the
way up to pure invective.
Freeforall does not seek any financial advantage. It
does not run ads, sell information to businesses, or
use the website or the information about its visitors
in any other way. A number of copyright owners
object, requesting that Freeforall simply post links to
articles. Freeforall refuses on several grounds. Links
often expire. Some of the material requires
registration or even a paid subscription. Freeforall
also posts text from paper works that are not
available online. If the copyright owners sue, is
Freeforall protected by fair use?
17. Google Books. Google undertakes a library
digitization project. Google's plans are flexible, but
suppose it takes the following approach: With the
cooperation of several libraries, Google will scan
their collections, book by book. Google will include

the material in a huge database. Google users will be


able to search the database using Google Books. A
user will not be able to download the book's text but
will get back only a few lines of text with each
search result. The user may get links to places to buy
the book (like Amazon.com) and advertisements
keyed to the search and its results. To do this, Google
will have to do a lot of copying (scanning, saving
into the database, giving snippets to users, and more)
of copyrighted works (as well as a lot of
noncopyrighted works). Publishers object and
suggest that Google negotiate licensing fees. Fair
use?
That question sparked a lot of online discussion. A
Google search for Google Books and fair use
yielded about 102 million results. Opinions were all
across the spectrum. What do you think?
18. That's gratitude for ya. Grateful Dead: The
Illustrated Trip tells the story, month by month, of the
decades-long career of the band the Grateful Dead. It
includes reproductions of many relevant artworks.
Among them are thumbnail versions of seven concert
posters, approximately two-by-three-inch versions of
the large, highly creative posters. The publisher had
sought permission from posters' copyright holder, the
Bill Graham Archives, but was refused. There was
no practice of paying licensing fees for such uses.
Fair use?
19. Flipendo Lexicon. RDR Books seeks to publish the
Harry Potter Lexicon, an encyclopedia listing terms,
events, characters, and various other aspects of the
Harry Potter books and movies. The encyclopedia
sticks close to the text of the books, with its entries
quoting many passages largely verbatim. The Harry
Potter copyright holders seek an injunction. Among
other reasons, Harry Potters author plans her own
reference work. The Lexicons publishers argue fair

use, on the theory that the work is a reference work,


useful for research and scholarship; that the purpose
of the work is transformative, like the protected
parody in the Pretty Woman case; that the amount
taken is appropriate; that the material taken was
largely nonprotected factual material, relating what
happened to whom in the books; and that the Lexicon
would not hurt the huge market for Harry Potter.
20. AWOL. The U.S. Postal Service (USPS)
commissioned a sculpture for the Korean War
Veterans Memorial. In the agreement, the sculptor
adamantly retained the copyright. The USPS
subsequently put a photo of the sculpture on a postage
stamp, which sold millions of copies. The
photographer had made the image of the snowbedecked
sculpture as a present for his father, a
Korean War veteran. The USPS signed a license
agreement getting permission only from the
photographer. The sculptor was not consulted. Fair
use?
21. Sample. Public Announcement's song D.O.G. in
Me makes repeated use of a sample from George
Clinton's Atomic Dog. The sampled elements are
the use of the word dog in a low voice as musical
punctuation, the rhythmic panting, and the refrain,
Bow wow wow, yippie yo, yippie yea. Many
others paid to sample from Atomic Dog, but Public
Announcement did not. Fair use?
22. Enlargement. The Los Angeles County Sheriff's
Department buys 3,663 licenses to use Wall Data's
software but installs the software onto 6,007
computers, configuring its network so that no more
than 3,663 copies will be in use at any one time. Fair
use?
23. Fair, Rasta. Prince, a successful appropriation artist,
tore prints of photos from a book titled Yes, Rasta
and dramatically altered them with paint, printing,

and pasted elements. After the altered prints are sold


for gigantic sums, the photographer sues for
infringement. Fair use?
24. Fair clips? Meltwater's Global Media Monitoring
service enabled users to monitor the news based on
the presence of certain words or phrases in news
articles appearing on the Internet and to receive
excerpts of those news articles. Meltwater uses
automated computer programs or algorithms to copy
or scrape an article from an online news source,
index the article, and deliver verbatim excerpts of the
article to its customers in response to search
queries. Fair use?
25. Coursepacks. University professors make copies of
excerpts of books and provide them to their students
online. Fair use?

Explanations
1. The use does not qualify as fair use. Indeed, although
the ultimate purpose is to fund highly praiseworthy
activities, every factor in the fair use analysis weighs
against finding fair use here. It does not fall into one
of the favored uses: criticism, commentary, news
reporting, teaching, scholarship, or research. The
purpose is arguably charitable (indirectly), but the
direct use is simply commercial. Moreover, the use
simply reproduces the work without adding any
creative expression, so that factor is at best neutral
and more likely weighs against fair use. The nature of
the work is a highly protected creative work, which
weighs against fair use. The amount copied is the
entire work, again a strong factor against fair use.
Finally, Snapz earns licensing revenue from various
uses of the photo. The failure to pay him licensing
while widely exploiting the work makes the fourth
factor also weigh against fair use.
2. Under recent cases, a court would probably deny fair

use. The nature of the work depends on the materials


chosen for copying, but expressive texts are likely to
be highly protected literary works. The purpose of
the copy shop is commercial, and courts are not
likely to consider the purpose of the students, who
buy the coursepacks for educational purposes. The
amount taken would often not be the whole work, but
presumably the instructor would choose what she
deemed to be important sections. Remember that
Harper & Row denied fair use to a few hundred
words copied from a book and deemed especially
significant (although that was unpublished work,
which is much less subject to fair use). The last
factor weighs strongly in favor of the copyright
owners. Other copy shops do pay licensing fees, so
the practice would cause the copyright holders
market harm.
3. Strive has a strong argument that making a copy for
purposes of reverse engineering is fair use. See, e.g.,
Sony Computer Entertainment v. Connectix, 203
F.3d 596 (9th Cir. 2000); Atari Games v. Nintendo of
Am., 975 F.2d 832 (Fed. Cir. 1992); Sega Enters. v.
Accolade, 977 F.2d 1510 (9th Cir. 1992). The
purpose of the use is commercial, but it is also
research. Moreover, making a copy may sometimes
be the only way to gain access to the unprotected
functional aspects of works. The nature of the
copyrighted work is a computer program, a functional
work rather than a highly expressive work whose
nature lies at the core of copyright. The amount
copied was the entire work, but such intermediate
copying was necessary to study the functional
aspects, and none of the expressive aspects was
copied into the final product. Finally, SoMak may
lose sales, not because Strive is selling infringing
copies but because Strive is selling noninfringing
copies in legitimate competition. Such market harm

does not weigh against fair use in the same way the
loss of sales from the criticism in a book review or a
parody does not weigh against fair use.
4. Smiling Al is about to lose his smile. He is not
protected by fair use. Parody can be protected by fair
use, as in Campbell, but there is a key distinction in
this case. The purpose of the parody in Campbell, in
part, was commentary. The parody in Campbell was
an effective critique of the very worldview of the
copyrighted work. Here, the parody does not
comment on or criticize the original work. Rather, the
parody borrows the tune of the original to profit from
its popularity, which verges on the very free-riding
that copyright exists to reduce. The parody does add
creative expression and somewhat transform the
original work, but such elements would appear in
almost any derivative work. See also Dr. Seuss
Enters. v. Penguin Books USA, 109 F.3d 1394 (9th
Cir. 1997). (The Cat NOT in the Hat! A Parody by
Dr. Juice, the story of a famous criminal trial retold
in the form of a parody of a famous children's book,
was not protected by fair use.) For a parody that was
protected as fair use because it commented on and
criticized the copyrighted work, see Mattel Inc. v.
Walking Mt. Prods., 353 F.3d 792, 802 (9th Cir.
2003) (where Mattel marketed Barbie doll as a
symbol of American girlhood with a glamorous
lifestyle and engaged in exciting activities, artist
turned this image on its head, so to speak, by
displaying carefully positioned, nude, and sometimes
frazzled looking Barbies in often ridiculous and
apparently dangerous situations).
5. In Video Pipeline, Inc. v. Buena Vista Home Ent.,
342 F.3d 191 (3d Cir. 2003), the court rejected fair
use. Although the distributor used only portions of the
film, the other factors would weigh against fair use.
To make the trailers entertaining, the distributor

chose some of the best bits (like using the most


interesting parts of the book in Harper & Row). The
trailer would not substitute for the film (well, in most
cases), but the distributor also foreclosed a potential
market for the copyrighted works because film
companies or other services would likely compete to
provide trailers.
In addition, Trailer's book review analogy is
flawed. A trailer is not a review, using portions of
the book as part of a critical discussion of the book.
Rather, a trailer is a compilation of portions of the
work.
6. Probably fair use. See Kelly v. Arriba Soft Corp.,
336 F.3d 811 (9th Cir. 2003). The use is commercial,
especially if the search engine uses the service to sell
advertising. The works are highly protected creative
works. But the use is a productive use. The search
engine made at least two copies (downloading a copy
and making a thumbnail version). But the website
permitted the downloading, and the thumbnail was no
more than necessary for the favored productive use.
There was also likely to be no harm to the potential
market. The use did not serve as a substitute for the
copyrighted works (because the thumbnails had
greatly diminished resolution). Nor is there a market
for licensing works to search engines.
7. Fair use. Critic did use protected expression without
permission, but the factors would favor fair use.
Critic made a favored use: criticism. The work was a
highly protected creative work, but such works are
certainly subject to criticism, so the factor would not
weigh heavily. The amount used was not large and
was also appropriate for the favored use. There was
market harm but not a cognizable harm. The author
lost sales not because Critic sold copies of the work
but because Critic convinced people not to buy the
work.

8. Fair use serves to implement the other limitations on


the scope of copyright. Facts are not copyrightable,
but a database of facts may be copyrightable because
of the originality in selecting and arranging the data.
Wholesale copying and distribution would be
infringement because it would entail copying the
protected elements of the database, but the copyright
in the selection and arrangement should not make it
impossible to copy unprotected elements. To extract
facts, it might be necessary to make intermediate
copies including protected elements. Provided that
the copying of protected elements was done only to
gain access to unprotected elements and the scope of
copying did not exceed that purpose, fair use would
likely shield extractor from infringement claims. See
Assessment Techs. of WI, LLC v. WIREdata, 350
F.3d 640 (7th Cir. 2003).
9. It will weigh against fair use if the defendant
wrongfully acquired a copy. For example, in Harper
& Row, the Court noted that the Nation had
knowingly exploited a purloined manuscript in
printing prepublication excerpts of President Ford's
autobiography. Likewise, some courts have suggested
that making copies for the purpose of reverse
engineering a product can be fair use only if the copy
was rightfully acquired. But even an illegally
acquired copy may be subject to fair use, other
factors permitting. See NXIVM Corporation v. The
Ross Institute, 364 F.3d 471 (9th Cir. 2003), in
which a seminar manual was obtained wrongfully
and small portions were distributed on the Internet as
parts of writings that critically analyzed the manual.
The wrongful acquisition weighed against fair use,
but the court held that the other factors were strong
enough to overcome that. The defendant did not
simply distribute copies of the manual. Rather, the
defendant made a transformative use. He used no

more than necessary for the favored use. The


distribution of ideas is favored, and the suppression
of such distribution using protection of their
copyrighted expression is not.
In our case, we would need to know more about
Money Moneys article. Fair use is not precluded by
the fact that the letter was obtained through breach of
contract. But all factors must be weighed. The use is
news reporting, a favored use. It could be a
productive or even transformative use if the excerpts
from the letter are integrated into a larger story, as
opposed to simply reprinting excerpts. The amount
taken would be key: whether it was appropriate for
the favored use, and in particular whether the article
could simply copy unprotected facts and ideas rather
than copying original expression. Finally, it seems
unlikely there would be cognizable market harm
(unlike Harper & Row).
10. Courts often will find a disfavored commercial
purpose even where the use has some aspects of
reporting, historical writing, or other favored
purposed. For example, in Elvis Presley Enterprises,
Inc. v. Passport Video, 349 F.3d 622 (9th Cir. 2004),
fair use did not protect documentary film's use of
various excerpts from copyrighted works, where loss
of licensing revenue was shown. The compilation of
such works could be viewed as scholarship or even
education, and is itself creative and somewhat
transformative. The decisions about what to include,
how to arrange it, and how to edit the whole are all
creative choices. The documentary was presumably
intended to further the discourse about a notable
public figure. But the court held that the overriding
commercial purpose of the endeavor put it into the
disfavored category. The transformative element was
somewhat thin, for what the defendant used were
literal clips from the materials, profiting from their

creative, copyrighted aspects. Because the clips


served the same entertainment value as the original,
the factor would weigh against fair use. Although the
clips were short in absolute terms, the plaintiff often
used the heart of the works, because in making a
documentary one would naturally seek to use the best
moments from the excerpted materials. The use of
material without permission, for example, was likely
to be deemed a loss of potential licensing revenue.
Were such practice to become widespread, licensing
of the materials would certainly suffer. Elvis Presley
is representative of the reluctance of courts to allow
large-scale use of copyrighted excerpts. It also
represents the reluctance to extend fair use even to
genuine works of scholarship and history, where the
works also have a commercial element that benefits
from use of the copyrighted works. Without question,
fair use is not a cure for the obstacles that copyright
creates for scholars and researchers.
11. The Second Circuit rejected the defense of fair use.
See Castle Rock Ent. v. Carol Publishing Group,
150 F.3d 132 (2d Cir. 1998). The defendants argued
that the book should qualify for fair use, for several
reasons. They contended it was a transformative
work (in that it took a television program and
transformed it into a quiz book) and that it threw the
program and its cultural place into a new light. In
addition, the book was a favored educational work,
both assessing and increasing the reader's knowledge
of Seinfeld. Finally, Seinfeld had offered no book of
its own, so there was no demonstrated loss of market.
The Second Circuit rejected all those arguments.
The book was not transformative, because it merely
repackaged the entertaining aspects of the television
program. It did not add any independent criticism or
commentary and was unlike the parody in Campbell.
Although it was a quiz book, its educational value

was slight. Rather, it was a commercial work


intended to benefit from the popularity of the program
by copying its creative content. The nature of the
work was a highly protected creative work, and the
amount taken was substantial, forming the bulk of the
quiz book. Finally, although the producers of Seinfeld
had not created such a book, the SAT certainly had
exploited a market the copyright owner would in
general develop or license others to develop, the
relevant consideration under Campbell. The owner
of the copyright in Pretty Woman might be unlikely
to authorize a parody rap version of the song, but the
owner of the Seinfeld copyrights might well authorize
books that simply repackage the television program.
12. The court rejected Prince's fair use defense. The use
was commercial, yielding substantial sales. It was
held only minimally transformative. Canal Zone did
not comment on or criticize Yes, Rasta (unlike a
parody) but rather used the photos as raw material.
The cancellation of the exhibition of the photographs
showed market harm, along with the demonstrated
potential for derivative works.
13. Fair use. In particular, there was no market harm,
where the supporters of the candidate would
(arguably) not have been customers of the preacher's
detractors. See Hustler Magazine, Inc. v. Moral
Majority, 796 F.2d 1148 (9th Cir. 1986).
14. The court rejected fair use. The use was a favored
use, criticism of the tests, but the tests were highly
protected unpublished works, the value of which
depended on their remaining unpublished. The
amount taken was the entire tests. The favored
purpose could have been accomplished without
publishing the entire tests, either by publishing
selected questions or by publishing an analysis that
did not compromise their security. The defendant also
acted in breach of her contract, which would weigh

against fair use. Cf. Chicago Board of Education v.


Substance, Inc., 354 F.3d 624 (7th Cir. 2003).
15. The court held fair use inapplicable. A&M Records,
Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001).
The first issue would be the nature of the use.
Napster is a commercial entity, but the relevant use is
the consumer's use. The Ninth Circuit characterized
file sharing by consumers as a commercial use, hence
disfavored in the fair use analysis. The court
reasoned that by trading music a consumer is
providing music to some anonymous member of the
public and receiving music free, which the consumer
would otherwise pay for. In addition, the practice
amounts to repeated and exploitative copying of
copyrighted works. By contrast, in Sony, consumers
made copies for themselves simply to change the time
of viewing.
Whether the court was correct in terming the use by
consumers as commercial might be questioned, but
the use is certainly different from Sony. There,
copyright owners authorized broadcasts to be viewed
for free. Time shifting simply changed the time
consumers viewed the program. File sharing, by
contrast, allows consumers to avoid paying for music
and to make copies for repeated listening.
The nature of the works would be highly protected
works. The works were copied in their entirety. Both
factors would weigh against fair use.
The last factor is effect on the market. The court
determined that market harm had been demonstrated,
which would be a strong factor against fair use. In
Sony, there was no such showing with respect to time
shifting of television programming.
16. Freeforall Forum would not qualify for fair use. Cf.
Los Angeles Times v. Free Republic, 54 U.S.P.Q. 2d
1453 (C. Dist. Cal. 2000). Freeforall would contend
that fair use protects their activity as a not-for-profit,

transformative use that fosters the favored purposes


of criticism, comment, and news reporting. It does
not charge for access, so it is not diverting revenues
from the copyright owners.
The first factor favors Freeforall. Even if it took
donations, it did not charge visitors or advertisers
and so would probably not be a commercial use. It
does foster criticism, comment, and news reporting.
But the other factors would weigh against fair use.
As to the nature of the works copied, they were
medium protected literary works containing much
factual, nonoriginal, or otherwise non protected
material. The amount of copying factor would weigh
heavily against fair use. Freeforall copied the entire
texts of articles. Its pur poses of fostering comment
could have been served by much less ex tensive
copying. It could have copied all unprotected facts
and ideas, but it saved itself the trouble by using
wholesale copying. Likewise, it could have linked to
the original sources for at least some pieces but
instead copied the pieces to its own site.
As to the final factor, there may not be a concrete
showing of harm. But a court would likely conclude
that of the many visitors to Freeforall's site, at least
some were using that as a substitute for visits to the
original site, costing advertising revenue and
decreasing the popularity of the site (and its value).
This factor would be even stronger if the copyright
owners could bring forward specific market data,
which is not unlikely given the bountiful data
available.
17. There's a lot of room for argument on this one,
because the general topic of fair use and the Internet
is still very unsettled. Two sides of the argument
might run this way:
a. Of course it is fair use. The nature of the use is
helping people to identify books that they are

interested in. This is far from a merely


reproductive use, rather is a productive, if not
transformative, use. It assists the free flow of
ideasa prime policy of copyrightwithout
distributing more than a tiny amount of creative
expression, because users only get a few lines
of text with each search result. Two factors
might weigh against fair use. Many of the works
are highly protected creative works, and they
are being copied in their entirety. But those are
both undercut. The creative aspects, like the
works as a whole, are copied only as part of
facilitating research and the dissemination of
ideas. Those creative aspects are not
distributed. Finally, there is no showing of an
adverse effect on the market. The snippets in no
way serve as a substitute for the books or even
as a substitute for excerpts from the booksjust
like reverse engineering, by which you make an
intermediate copy of the whole work to get at
its unprotected aspects.
b. Of course it is not fair use. This is systematic
copying of entire libraries, well beyond the
scope of anything that ever qualified as fair use.
No market harm? Google makes e-books by
scanning the paper books. Google uses those ebooks
to compile indexes. Well, publishers
already sell e-books and indexes to the contents
of books. If Google wants electronic copies of
the books or searchable indexes, it should buy
them from the publishers or get permission to
scan them. The use is commercial, just like the
photocopying cases. The users may use Google
Books for research or education, but Google is
doing this as a commercial entity to sell
advertising, accumulate useful marketing data,
and establish itself as a key source of

informationother people's copyrighted


information. Finally, there is a clear showing of
market harm. As Google's actions show, there is
a demand for the use of copyrighted books in
databases. We stand willing to negotiate a
price.
Google adjusted its plans, announcing that it
would suspend scanning for three months and
honor requests by publishers to opt out of the
project. See Google Library Project
Temporarily Halted to Allow Copyright Owner
Response, BNA Patent, Trademark & Copyright
Journal, August 19, 2005. This leaves open the
question of whether there would be
infringement if Google scans a book where the
publisher has not opted out. Certainly,
willingness to omit books on request weighs in
favor of good faith use and fair use, but that is
only part of one of the factors.
In 2008, Google settled the suit brought by the
Author's Guild and Association of American
Publishers. Google agreed to pay some $125
million. The parties plan to establish a Book
Rights Registry to track use of works and to
collect and distribute royalties. Authors could
choose to opt out. Many out-of-print books
would be available again. There are provisions
for subscription services for schools and free
services for libraries. Some commentators
expressed concern that Google would gain a
market advantage by effectively excluding
potential competitors and alternative forms of
access. The trial court declined to approve the
settlement, on the grounds that the parties could
not bind authors not party to the suit. See
Authors Guild v. Google Inc., 770 F. Supp. 2d
666, 678 (S.D.N.Y. 2011). The trial court held

that the Google Books project was fair use.


Authors Guild, Inc. v. Google Inc., 954 F.
Supp. 2d 282 (S.D.N.Y. 2013), but litigation
will likely continue.
The Second Circuit held that fair use
protected unauthorized scanning and compiling
of books into a searchable database. See
Authors Guild, Inc. v. HathiTrust, 755 F.3d 87
(2d Cir. N.Y. 2014). Google scanned books
from the collections of member libraries, such
as universities. The database allowed three
types of uses. Anyone could search the database
and receive results showing only books
containing the search terms, along with page
numbers (no snippets of text, unlike Google
Books). Member libraries could use the
database to enable readers with disabilities
(such as blindness or inability to turn pages) to
use adaptive technologies, such as software that
magnified the text or read it aloud. Member
libraries could also use electronic copies to
replace lost originals.
The digital age will continue to raise many
issues of fair use. See, e.g., Matthew Sag,
Copyright and Copy-Reliant Technology, 103
Nw. U. L. Rev. (2009) (discussing technologies
that rely on copying for nonexpressive uses,
such as search engines, plagiarism-detection
software, reverse engineering and Google's
nascent library cataloging effort).
18. Fair use. See Bill Graham Archives v. Dorling
Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006). The
nature of the use was both historical writing and
transformative, because by setting the posters into the
context of a timeline, it adapted them into another
creative work. Defendants also showed good faith by
attempting to get permission to use the works. As to

the second factor, the copyrighted works were highly


creative posters, which would weigh against fair use.
But where the use is transformative, that weighs less
heavily. Under the third factor, the amount used was
the entire work, which again weighs against fair use,
but the amount used was appropriate because the
entire poster would be relevant to the timeline.
Moreover, only thumbnail versions were used, as
opposed to full-scale or high-quality reproductions,
so the amount used was appropriate to the favored
use. Finally, there was no showing of relevant market
harm. The biography would not serve as a market
substitute for the posters themselves, especially
where the use was thumbnail reproductions of
much lower resolution than the posters and having
less visual quality. Nor was there shown to be
regular market for such licensing.
19. The federal court in New York rejected fair use.
Warner Bros. Entertainment Inc. v. RDR Books, No.
07 Civ. 9667 (S.D.N.Y. 2008). Harry Potter's author
cannot prevent others from writing reference books
about the young magician's tales. Nor can she prevent
copying of ideas and nonoriginal material (such as
preexisting witchcraft lore that she used). Others may
make fair use even of her original creative
expression. But the Lexicon exceeded the bounds of
fair use. The key factor was that the Lexicon used
much more of her expression than necessary to
provide a reference work. There was also a showing
of potential market harm by her concrete plans to
write an authorized Harry Potter reference.
20. Most photos of national monuments would qualify for
fair use, but this use did not qualify, for several
reasons. The use by the USPS was commercial
(selling millions of stamps). The photographer's
image was not held to be transformative, but rather
simply a beautiful image of the sculpture in snow.

Moreover, any transformative use was by the


photographer, not by the USPS. In addition, the
parties here were not strangers. The negotiated
agreement did not grant the USPS the copyright, or a
license to make derivative works. Fair use is not a
way to transform the agreement itself. See Gaylord v.
United States, 595 F.3d 1364 (Fed. Cir. 2010).
21. Infringement. The use was commercial. It was also
transformative but did not criticize or comment on the
original. Although the elements copied were small,
they were among the most distinctive elements of the
song. Market harm was shown by the many others that
paid to license samples of the song. See Bridgeport
Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267,
277-279 (6th Cir. 2009).
22. Infringement. The Sheriff's Department could have
bargained for the flexibility it desired, but it did not.
Whenever a user puts copyrighted software to uses
beyond the uses it bargained for, it affects the
legitimate market for the product. See 447 F.3d 769
(9th Cir. 2006).
23. The Second Circuit held the adaptations were fair
use, emphasizing that the use was transformative
because it altered the original with new expression,
meaning, or message . These twenty-five of
Prince's artworks manifest an entirely different
aesthetic from Cariou's photographs. Where Cariou's
serene and deliberately composed portraits and
landscape photographs depict the natural beauty of
Rastafarians and their surrounding environs, Prince's
crude and jarring works, on the other hand, are hectic
and provocative. Cariou v. Prince, 714 F.3d 694
(2d Cir. N.Y. 2013).
24. The court rejected fair use, looking primarily to the
effect on the market for the copyrighted works: By
refusing to pay a licensing fee to AP, Meltwater not
only deprives AP of a licensing fee in an established

market for AP's work, but also cheapens the value of


AP's work by competing with companies that pay a
licensing fee to use AP content in the way that
Meltwater does. AP v. Meltwater U.S. Holdings,
Inc., 931 F. Supp. 2d 537 (S.D.N.Y. 2013). Unlike
typical search engines that return thumbnail versions
of photographs or snippets of text, Meltwater
provided the very information sought and so replaced
the original works.
25. We need to know more, such as the length of the
excerpts and whether there is a practical way for the
university to get license. Cambridge Univ. Press v.
Becker, 863 F. Supp. 2d 1190 (N.D. Ga. 2012). The
court looked to whether practicable licensing
agreements were available to universities. Where the
works were not available to be licensed, such
electronic reserves were generally fair use. Where
licenses were available, such as through the
Copyright Clearance Center, fair use permitted use of
part of a chapter (where the book had ten chapters or
less) or one chapter (where the book had more
chapters). This approach may broadly affect
practices. Universities may seek more licenses or
limit electronic reserves to the prescribed limits.
Publishers may take into account the decision,
perhaps in ways that could be a little comical, such
as dividing books into many small chapters. James
Grimmelmann, Inside the Georgia State Opinion,
The Laboratorium, May 13, 2012, http://laboratorium
.net/archive/2012/05/13/inside_the_georgia_state_opinion
Under this case, by making copyrighted works
available for licensing, a rights holder makes it less
likely that unauthorized use would be fair use. One
could see that as shrinking fair use because a
publisher can inoculate its book against broad fair
use by signing up with a licensing service. But one
could also see it as benefitting users by encouraging

publishers to make works available, which avoids


the troublesome issue of figuring out how much use is
faira little like buying copyright infringement
insurance.

Chapter 15 moral and visual rights


Examples
1. VARA protected? Which of the following works
would be protected by section 106A (a.k.a. the
VARA)?
a. The song Pretty Woman.
b. A Pulitzer Prize-winning photograph of a
marathon winner taken by a news photographer
for publication.
c. An oil painting of the CEO of Megacorp painted
by a Megacorp employee as part of her job.
d. A lithographic print of a leaping lizard by
Gratho. She made only 50 of the prints.
e. A mural depicting the workers of the world
made by the employees of a human rights
organization for their headquarters. After the
lease ran out, the property has been leased to a
bank, which plans to paint over the mural.
f. A 1966 painting by Picasso, which he sold in
1968.
g. A 1966 painting by Picasso, which he never
sold. It is out of copyright in the United States
because of publication without a copyright
notice in 1967.
h. A creative painted banner depicting marathon
runners made by an artist commissioned by
Alligator Fuel Sport Drink. The banner was
used as advertising at the Hendersonville
Marathon.
i. A 1990 painting by Ashley, which she sold in

1992 to a collector. Ashley also sold the


copyright to the painting in 1993 to Alligator
Fuel.
j. Falling Weather, a still photograph by Geoff.
He made only one print, for exhibition at his
gallery.
2. Unfinished. Bchel, an artist, works on an
installation in the Massachusetts Museum of
Contemporary Art. In Training Ground for
Democracy, visitors would play such roles as
immigrants, activists, looters, and judges, working
their way through installations ranging from a movie
theater to an aircraft fuselage. The artist and museum,
however, did not manage to finish the project
together. When the museum proposed showing the
unfinished work, the artist sued, claiming that would
violate his rights under the VARA. Is an unfinished
work protected?

Explanations
1. a. The VARA protects only works of visual art,
which must be a painting, drawing, print,
sculpture, or photographic image. The song
would not be protected.
b. Photographs may be protected but only if they
are taken solely for exhibition purposes. News
photos would not qualify, so the VARA does
not protect this prize-winning photo.
c. A work made for hire is not protected, even if
it is a painting, drawing, print, sculpture, or
photographic image.
d. A limited-edition work may be protected but
only if the individual prints are consecutively
numbered and signed by the author. That was
not done here, so no VARA protection.
e. A work made for hire is not protected, so not
protected. See Carter v. Helmsley-Spear, 71

F.3d 77 (2d Cir. 1995).


f. A work created before June 1, 1991, is
protected only if the artist had not transferred
title before that date. Picasso had sold it, so no
protection.
g. Works are not protected by the VARA if they
are out of copyright, so no protection.
h. The VARA does not protect any
merchandising item or advertising, so the
banner would not be protected. Cf. Pollara v.
Seymour, 344 F.3d 265 (2d Cir. 2003).
i. The painting would be protected by the VARA.
The fact that the author no longer owns the
work or the copyright does not affect VARA
rights (in post-1991 works).
j. This photograph would be protected as a still
photograph produced for exhibition purposes
only.
2. The definition of work of visual art does not
require a work to be finished. Not protecting
unfinished works would leave a considerable gap.
The court held that moral rights do apply to
unfinished works, and so the artist had the right to
protect his rights of integrity and attribution. See
Massachusetts Museum of Contemporary Art
Foundation, Inc. v. Bchel, 593 F.3d 38 (1st Cir.
2010).
17 U.S.C. 106A(a).
In short, authors of works of visual art are generally
entitled to receive attribution of authorship, prevent
misattribution of authorship, and protect the work itself
from intentional modification or destruction.

Examples
1. How much protection? Pamela painted a portrait of
her niece, Vera. Pamela then sold the painting to
Vera's mother, Maya. Which of the following would
violate Pamela's VARA rights?
a. Maya puts the painting on exhibition at a local
gallery with a plaque stating that Maya painted
the portrait.
b. Maya covers the painting with a thin layer of
transparent sealer, intended to prevent wear and
tear to the painting. Pamela feels the sealer
distorts the appearance of the painting.
c. Maya lends the painting to the Museum of Bad
Art, which exhibits it in a gallery of awful
portraits of children. The museum puts an
orange spotlight on the painting, making it look
ghastly.
d. Maya gets the painting back and uses her own
paints to touch it up, changing the subject's
expression and features and the overall mood of
the painting. It makes the painting much worse.
She then puts the painting on exhibit, attributing
it this time to Pamela.
e. Maya burns the painting on a chilly night.
f. Gonzo takes a photo of the painting, uses
software to widely distort it, and places the
image online.
2. Don't move. A landscape artist created an integrated
set of sculptures for a park. The owner of the park
decided to remove the sculptures to make way for a
new overall design of the park. The first artist argues
that this would violate his right to the integrity of the
work. Even if the sculptures were not physically
modified or distorted in removing them, it would
modify and distort the work as a whole, because it
was an integrated, site-specific work of art.

Removing it from its site, along with the backdrop of


the nearby oceanside, would be like painting over the
background landscape in the Mona Lisa. Does the
VARA prohibit moving the sculptures?

Explanations
1. a. This would violate the right of attribution.
b. The VARA provides that modification of a
work of visual art which is the result of
conservation does not infringe. The use of the
sealant would be protected as a conservation
measure.
c. This may not violate the VARA. Placing it in
the Museum of Bad Art might violate moral
rights in some countries (as disparagement),
but the VARA does not provide such rights.
The VARA also provides that the modification
of a work of visual art which is the result of
conservation, or of the public presentation,
including lighting and placement, of the work
is not a destruction, distortion, mutilation, or
other modification unless the modification
is caused by gross negligence. The museum
would argue that its lighting and placement of
the work is protected, but it might qualify as
gross negligence where an orange spotlight so
changes the look of the work. The question
would be whether the VARA extends the
modification where there has been no change
to the physical work itself. The statute does not
define the terms, and there is little case law as
yet. A possible defense would be fair use if the
museum argued that it used the orange spotlight
as commentary on the merits of the work.
d. This would violate both the right of integrity
(because Maya intentionally distorted and
modified the work) and attribution (because

the distorted work is attributed to Pamela in a


manner prejudicial to her reputation).
e. The VARA prohibits destruction of a work of
recognized stature. We do not have any facts
suggesting that this is a work of recognized
staturecritical acclaim, exhibition in
museums (other than the museum of bad art),
recognition by peersso Pamela does not
appear to have a right to prevent destruction.
f. The VARA rights against distortion and
destruction under section 106A protect only the
work itself, so Gonzo would not be liable
under section 106A. He might, however, be
liable for infringing the exclusive rights to
make copies and to adapt the work (by making
a derivative work), under section 106.
2. Phillips v. Pembroke Real Estate, Inc., 459 F.3d
128, 137 (1st Cir. 2006), addressed this difficult
conceptual issue about the scope of the right to
prevent modification and distortion of the work. The
court held that the case was addressed by the public
presentation provision, which permits modification
of public presentation, including lighting and
placement. The VARA does not give absolute
protection to artistic integrity. Rather, with its various
limitations and exceptions, the VARA represents a
compromise between protecting the moral rights of
artists and protecting the freedoms of others whose
actions may affect the art. As the court put it,
protecting outdoor art against any change in its
lighting and placement could, in theory, put limits not
just on the property owner but also on any neighbors
whose use of their property could come within the
scope of the artwork.
Such a reading does not leave artists without legal
protection. The VARA provides a gap-filling rule
where the parties have not reached their own specific

agreement. An artist may seek greater protection by


agreement with the commissioning party. Such
provisions could be made binding on future owners
of the land through easements or covenants running
with the land.

Example
1. Iron hand. Art Pictures sells thousands of copies of
Quack, a book of photographs of ducks. Art Pictures
holds the copyrights in all the pictures. Webby Crafts
purchases several copies of the books. Webby cuts
out various photos, glues them to decorative ceramic
plates, applies a shiny gloss finish, and sells the
mounted pictures in its boutique. Art Pictures knows
it cannot sue under the VARA; this does not involve a
limited edition of consecutively numbered
photographic prints. But Art Pictures sues for
infringement of its copyright, arguing that Webby has
created unauthorized derivative works. Several
chapters ago, we saw that courts differ on whether
Webby is liable for infringing Art Pictures' exclusive
right to prepare derivative works. How does this fit
into the moral rights issue?

Explanation
1. As Judge Easterbrook put it, if this counts as a
derivative work, then the United States has
established through the back door an extraordinarily
broad version of authors' moral rights, under which
artists may block any modification of their works of
which they disapprove. No European version of droit
moral goes this far. Lee v. A.R.T. Co., 125 F.3d 580,
582 (7th Cir. 1997). The exclusive right to prepare
derivative works can indeed protect authors against
modification of their works, but if any modification
of the work infringes the right to prepare derivative
works, then the VARA would hardly be necessary. A
better view is that preparation of an infringing

derivative work requires preparation of a new work,


with the requisite originality for it to qualify for
copyright.
Chapter 17

Examples
1. No standing. Homer travels across the United States,
posting an account of his journey on a blog. Cicero, a
small book publisher, enjoys the account and asks
Homer for permission to publish the story in book
form. Homer tells Cicero to go right ahead. After
Cicero has printed several thousand copies, he learns
that another publisher has also begun marketing the
story in book form without Homer's permission.
Cicero can show that this has cost Cicero thousands
of dollars in orders. Does Cicero have standing to
sue the other publisher for copyright infringement?
2. Shut out. Writer is an employee of Movie Studio.
She writes a screenplay, Dara, Tara, and Dana.
Because the screenplay is a work made for hire, the
author, and therefore copyright owner, is Movie
Studio. The screenplay circulates around the movie
industry but does not become a film. Writer learns
that another studio made Danny, Tammy, and Randy.
Writer gets a copy and sees that it was copied
wholesale from her work. The movie has gone
nowhereit was neither released to theaters or on
DVDbut the other writer got paid handsomely.
Writer asks Movie Studio to sue for infringement.
Movie Studio does not want to sue but assigns Writer
any rights that Movie Studio has to sue for
infringement. Writer figures she can sue for
infringement: She created the work, and she owns the
cause of action. Does she have standing to sue? What
if Movie Studio also assigned her the copyright?
3. Notwithstanding. Websites, bloggers, and

commenters often post stories cut and pasted from


media websites. That may be infringement, or it may
be fair use. Righthaven purchased rights to sue for
many alleged infringements and filed hundreds of
actions, but Righthaven did not purchase any of the
exclusive rights. Copyright holders might be willing
to sell their rights to sue for infringements (past and
future) for either a specified payment or a percentage
of the proceeds. That would allow the copyright
holder to have income without playing the role of
enforcer, which could be costly not just financially
but also to its reputation. But the copyright holder
may be reluctant to transfer the entire copyright, or
even the exclusive rights most likely to be infringed.
That would take away its control over the
exploitation of the work and also bar certain forms of
exploitation of the work. Did Righthaven have
standing to sue for the alleged infringement?

Explanations
1. Cicero does not have standing to sue. Only the owner
of one or more of the exclusive rights has standing to
sue for infringement of the copyright. Cicero got a
nonexclusive license from Homer, so Cicero is not
the owner of an exclusive right and therefore lacks
standing. Some statutes give standing to sue to any
person injured by a violation of the statute. Copyright
infringement has a narrower standing requirement.
2. Writer does not have standing to sue. See Silvers v.
Sony Pictures Entmt., 402 F.3d 881 (9th Cir. 2005)
(en banc) (holding writer of screenplay, who
received assignment of an accrued claim for
copyright infringement but had no legal or beneficial
interest in the copyright itself could not institute an
action for infringement). The plaintiff must be the
legal or beneficial owner of any of the exclusive
rights at the time of infringement. Writer did not and

does not own any of the exclusive rights. She created


the work, but the copyright owner is Movie Studio.
She owns the cause of actionbut she must own one
of the exclusive rights to bring the action.
Even if Movie Studio assigned her the copyright,
the result should be the same. The owner of an
exclusive right may sue for any infringement of that
particular right committed while he or she is the
owner of it. The alleged infringement occurred
while Movie Studio owned the copyright at the time
of infringement, so only it would have standing to sue
for that infringement. If the copyright was assigned to
Writer and there was post-assignment infringement,
then Writer would have standing to sue for that
infringement.
3. A number of defendants settled, but once defendants
started to resist, several courts held that Righthaven
had not received transfer of sufficient rights to sue.
Righthaven L.L.C. v. Hoehn, 716 F.3d 1166 (9th Cir.
2013). An assignment of rights to sue for copyright
infringement without conveyance of actual exclusive
rights does not give standing to sue for infringement.
The narrow rule for standing in copyright cases
makes it difficult to structure an entity that is solely in
the business of enforcing copyright infringement.
Some courts awarded attorney's fees against
Righthaven. At last report, one of Righthaven's major
partners had terminated their agreement, stating on
reflection, It was a dumb idea.
Another question is who can be defendants? AF
Holdings, LLC v. Doe, 752 F.3d 990 (D.C. Cir.
2014), rejected the practice of suing numerous John
Does for copyright infringement as part of the
practice of what the court itself termed pornotrolling.
The plaintiffs had purchased the copyright
to a pornographic film, Popular Demand, and sued
1,058 anonymous defendants, identified only by IP

address. The suit alleged that they had all


downloaded the film using the BitTorrent service. But
defendants may be joined under Federal Rule of
Civil Procedure 20(a)(2) for an action with respect
to or arising out of the same transaction, occurrence,
or series of transactions or occurrences.
Downloading the same file moths apart as part of
different BitTorrent swarms was not the same
transaction or series of transactions any more than
two individuals who play at the same blackjack
table at different times.

Examples
1. You're the One for Me. Plaintiff alleges that
Defendant record company copies his song You're
the One (for Me) to make a song titled You're the
One. Both songs, like many others, use you're the
one for me in the lyrics. The melodies are vaguely
similartheir relationship is something more akin
to that of second cousins, twice removedbut those
similarities are shared by many songs already in the
public domain. They both use harmonic progression,
a common composing technique. They both repeat the
same note three times (as do many other songs).
There is little evidence that Defendant had access to
Plaintiff's song, beyond the fact that Plaintiff
delivered one copy of it to a sometime coworker. By
the same token, Defendant has little evidence of
independent creation, such as tapes from the
recording session. Is there sufficient evidence to get
to a jury?
2. How Deep Is Your Love? Ronald Selle composed
the song Let It End and performed it with his band
a few times in the Chicago area. Selle sent a tape and
sheet music to a number of music companies but
received no response other than getting his material
returned. Selle applied for and received a copyright

registration. A couple years later, Selle heard another


song, How Deep Is Your Love? by the group the
Bee Gees. That song was a huge seller and featured
in a Hollywood hit, Saturday Night Fever. Selle
sued for copyright infringement.
The two songs were similar in many ways. Many
notes were identical in pitch and symmetrical
position. Many of the rhythmic impulses were
also the same. But there is no evidence that the Bee
Gees ever had access to Selle's song, with its very
limited distribution. There is also considerable
evidence of independent creation, from witnesses and
from tapes capturing some of the evolution of the Bee
Gees' composition of their song. Is there sufficient
evidence to support a finding of actual copying?
3. Gotcha, Grouch? Reality Realty publishes a monthly
newsletter with in formation about all real estate
transactions in Sesame City. Grouch publishes a
weekly magazine with similar info, which Reality
strongly suspects is copied from its newsletter.
Grouch does not copy the selection and arrangement
of information or any of Reality's clever text. To test
its theory, Reality includes a fictitious transaction, a
sale of 727 Boeing Avenue for $123,456, from
Marilyn Monroe to Charles DeGaul, which duly
shows up in Grouch's next newsletter. Will that prove
infringement?

Explanations

1. The evidence would not be sufficient to support a


finding of actual copying. See Johnson v. Gordon,
409 F.3d 12, 24 (1st Cir. 2005). The court will
consider similarity between the works, Defendant's
access to Plaintiff's works, and evidence of
independent creation. Here, the slight similarities are
no more than would occur by coincidence: use of a
hackneyed phrase, vaguely similar melodies,

common compositional techniques, and using a note


three times. There is also no substantial evidence of
access to the work. Plaintiff would not meet the
burden of showing actual copying.
2. The court held there was insufficient evidence to
show actual copying. See Selle v. Gibb, 741 F.2d
896, 900 (7th Cir. 1984). There was a high showing
of similarity but no showing of access and
considerable evidence of independent creation. For a
plaintiff to succeed by showing similarity alone, the
similarity would have to be so great that it could be
explained only by copying. If two lengthy symphonies
were absolutely identical, one must have been copied
from the other. But things other than copying from
Selle's song could cause the striking similarity
between two songs.
3. It will not prove infringement. It proves actual
copying because the similarity can be explained only
by copying, but actual copying alone is not
infringement; there must also be copying of
copyrighted expression. The facts of a real estate
transaction are not copyrightableand this was
represented as fact, so would not be protected under
the doctrine of copyright estoppel.
Chapter 18 contributory infringement and vicarious
liability
Only vicarious liability would apply if Employee
had done the acts on her own initiative as part of her job
with Boss and sold the infringing copies for Boss's profit.
Only contributory infringement would apply if Boss had
talked a friend into making and selling the copies. In short,
contributory infringement requires a higher showing of
knowledge, while vicarious liability requires a higher
showing of control.

Examples

1. Community music. The Town of Plumby allows


nonprofit groups to use its town hall without charge.
The Plumby Players, a group of local musicians, sign
the standard agreement, promising to repair any
damage, finish all activities by 10 P.M., and comply
with all relevant laws and any directions from Town.
Any violation allows Town to terminate Players' use
of the town hall. Players play a series of concerts
over the course of the summer, charging no admission
to the sparse but enthusiastic audience. The music is
mostly under copyright, but Players do not seek or
need permission, because such nonprofit
performances are authorized by section 110(4) of the
Copyright Act. A copyright owner sues Town,
claiming that the protections of section 110 say
nothing about secondary liability. Is Town liable?
2. Community theater. Town permits similar use of the
town hall by the Plumby Hambs, a group of local
actors. The actors perform a series of copyrighted
plays over the summer. Unlike the musicians, the
actors are probably infringing, because section
110(4) authorizes only nonprofit performances of
nondramatic musical and literary works. We will
also assume fair use does not protect them. If the
actors are direct infringers, is Town secondarily
liable?
3. Commercial music. The Town of Plumby strikes a
deal with a promoter. The promoter rents the town
hall, its occupancy subject to Town's rules and
instructions. The promoter further agrees to obey all
laws, including getting any necessary permission
from copyright holders. The promoter agrees to pay
25 percent of its revenue to Town. The promoter
holds a summerlong talent contest called Plumby
Idol. Locals compete by performing well-known
songs. Unbeknownst to Town, no copyright
permissions are sought. The promoter is gone with its

share of the proceeds by the time the copyright


holders complain. Town responds that it did not
participate in or even know about the infringement
and even specifically prohibited it. Is Town liable?
4. Off Broadway. The Sherbert Theater Company rents
out its theater to an impresario. The parties sign a
typical lease known as a four walls agreement.
Sherbert receives its typical weekly lease payment
and relinquishes all control of the theater to the
impresariowho then stages The Lion King without
asking Disney. Is Sherbert liable?
5. Hand to hand, peer to peer. Cherry Auction
promotes and organizes a swap meet. Vendors pay a
daily fee to Cherry Auction and occupy small booths
in premises controlled and patrolled by Cherry
Auction. Cherry Auction has the contractual right to
terminate vendors. Customers pay an admission fee
to Cherry Auction, stroll around, and patronize
vendors. Customers often pay Cherry Auction for
parking and refreshments. An important draw to
customers is the fact that many of the vendors sell
attractively priced unauthorized recordings of
copyrighted music.
6. Napster (prelude to Grokster). Napster facilitates
music sharing by distributing software and providing
online services. Once a user downloads Napster's
free MusicShare software and registers with Napster,
she can make her music files available to others,
search the directory on Napster's website for music,
and download the music from other users by sending
a request to Napster, which establishes a link
between the two users. Napster does not charge users
for its software or services. It plans to make revenue
from its user base through things like advertising and
targeted e-mail. Users are subject to Napster's terms
of use, including Napster's right to terminate accounts
and services at any time. As Napster knows, most of

the music swapped using Napster is under copyright.


Is Napster vicariously liable?

Explanations
1. Town is not liable. There is no secondary liability
without a direct infringer. The musicians are not
infringing, because section 110 protects their
conduct. Town does not need to come within section
110. Town itself is not a direct infringer, because it
did not make copies, adapt the works, or publicly
distribute, display, or perform works. It cannot be
secondarily liable without a direct infringer.
2. This time there is a direct infringer. Town is
vicariously liable only if it profits directly from the
infringement and has a right and ability to supervise
the direct infringer. The plaintiff must show both
elements: direct financial benefit, and right and
ability to control. Town has the second (right and
ability to control) but not the first, because it does not
get a financial benefit. It is therefore not vicariously
liable.
3. This time Town is vicariously liable because there is
both direct financial benefit (its share of the
proceeds) and control (promoter's occupancy subject
to Town's rules and instructions). The fact that Town
had no knowledge of infringement does not save it.
For vicarious liability, there is no need to show
knowledge of the direct infringement. There is
liability even if the defendant initially lacks
knowledge of the infringement. MGM Studios Inc. v.
Grokster, Ltd., 125 S. Ct. at 2776.
4. Sherbert is not liable. There is no vicarious liability
without the right and ability to control. Unlike the
Town of Plumby, which retained the right to direct its
tenants, Sherbert relinquished all control to the
tenant. See Robert Stigwood Group, Ltd. v. Hurwitz,
462 F.2d 910 (2d Cir. 1972). Even if it had control,

there may not be the requisite direct financial benefit,


where Sherbert received its customary rent, as
opposed to a stake in the infringing activity. Note that
the result could be different if Sherbert had
knowledge of the infringement. Then it might be
liable for contributory infringement (discussed
below).
5. Cherry Auction was liable for vicarious
infringement. See Fonovisa, Inc. v. Cherry Auction,
Inc., 76 F.3d 259 (9th Cir. 1996). There was the
necessary right and ability to control. It promoted and
organized the swap meet and controlled the vendors
through the right to set rules, patrol the grounds, and
terminate vendors' occupancy. There was also the
necessary direct financial benefit. There was no set
percentage of sales. But the availability of
unauthorized copies at great prices was a draw to
customers. Because there were more customers,
Cherry Auction received more revenue from vendor
rental fees, customer admissions, parking fees, food
sales, and other sources. Cherry Auction was not like
a landlord who happened to have a tenant that
engaged in infringing activity. Rather, Cherry Auction
was like a dance hall owner, where infringement
acted to enhance the attractiveness of the venue to
potential customers.
6. The Ninth Circuit regarded Napster as an online
equivalent to Cherry Auction: Napster's failure to
police the system's premises, combined with a
showing that Napster financially benefits from the
continuing availability of infringing files on its
system, leads to the imposition of vicarious liability.
A&M Records v. Napster, Inc., 239 F.3d 1004, 1024
(9th Cir. 2001). The necessary direct financial
interest obtained in that the availability of infringing
material was a draw for users, and increased
numbers of users were critical to Napster's future

revenue. Napster did not charge users, but when more


users came to download copyrighted works, more
advertising and other sources of revenue could be
tapped. Napster was like the swap meet promoter or
dance hall operator. The court held the requisite right
and ability to control was also present. Napster has
the ability to locate infringing material listed on its
search indices, and the right to terminate users'
access to the system. The file name indices,
therefore, are within the premises' that Napster has
the ability to police.

Examples
1. Special orders. Audio Phil buys sound recordings on
CD from Rouge Records. Audio Phil e-mails a list of
CDs that he would like for his collection. Rouge then
locates a recording of the music, makes an
unauthorized copy, and mails it to Audio Phil. Phil
knows that he is getting unauthorized copiesthat's
why the price is so low. Indeed, Phil often sends
along information to help Rouge locate a recording to
copy, whether the local music library or a collector.
Sued for infringement, Phil responds that he has not
infringed any of the copyright holders' exclusive
rights: He did not make or distribute phonorecords. Is
Audio Phil liable?
2. Tailor made. Abdallah sells time-loaded cassette
tapes to his customers, who are in the business of
making and selling unauthorized copies of
copyrighted music. Blank cassettes usually come in
specific lengths, such as 45, 60, 75, or 90 minutes. If
the CD you are copying is 68 minutes, then a 60minute tape is too short and a 75-minute tape leaves
blank spacemore costly for the maker and an
annoyance to the consumer. Abdallah fulfills orders
from customers for tapes of specific length. He
knows that his customers are making phonorecords

without permission. Is Abdallah liable for


infringement?
3. Seek and ye shall find. Users can find almost
anything online using Google. Some use Google to
find sites that allow them to download copyrighted
music. Google does not promote such use. In general,
Google gets more revenue if it has more users,
whether they are googling people, searching for
music, or anything else. After Grokster, is Google
liable for contributory infringement?
4. Substitute. F2F appears not long after the Supreme
Court opinion in Grokster. F2F is a new provider of
file-sharing software, very similar to Grokster. Like
Grokster, F2F allows decentralized file sharing,
about 90 percent of which is copyrighted music.
Indeed, F2F's similarities win it many of Grokster's
former users. Like Grokster, F2F gets revenue from
advertising, which depends on the volume of use.
Unlike Grokster, there is no record of F2F making
statements encouraging its use for copyright
infringement. Is F2F liable for contributory
infringement?
5. Freebird. A small group of volunteers develop and
distribute Freenet file-sharing software. Unlike
Grokster, which anyone could join, a Freenet group is
open only to trusted members. Freenet uses
encryption to resist monitoring by outsiders, just as
old-time secret societies had secret handshakes. The
developer of Freenet has primarily political
purposes, such as helping dissidents in countries
where computer traffic is monitored by the
government. John Markoff, File Sharers
Anonymous: Building a Net That's Private, New
York Times, August 1, 2005. But he also scorns
copyright, preferring free sharing of all information,
and recognizes that a leading use of Freenet may be
for darknet distribution of infringing copies of

work. Id. If some groups use Freenet to swap music,


games, and software, are the developers of Freenet
liable for contributory infringement?
6. One bad applet. Wonka Software hires Charlie to
work on development of its Chocmatica software
package. Charlie signs an employment contract,
agreeing to abide by Wonka's regulations and
agreeing that Wonka can fire him with or without
cause at any time. Over the next few months, Charlie
contributes significant portions of code to the
Chocmatica product. Chocmatica goes live and sells
like hotcakes. It then turns out that Charlie had not
written any of the code but had simply cut and pasted
long portions of code from software of his prior
employer. Wonka argues that it is not vicariously
liable because it did not get a direct financial benefit,
the link between Charlie's coding and the sales of
Chocmatica being too indirect. Wonka also argues
that it is not contributorily liable because it lacked
knowledge of Charlie's activity. Is Wonka liable?

Explanations
1. Audio Phil is not liable for direct infringement, but
he is liable for contributory infringement.
Contributory infringement applies to one who, with
knowledge of the infringing activity, induces, or
materially contributes to the infringing conduct of
another. Gershwin Publishing v. Columbia Artists
Management, 443 F.2d 1159 (2d Cir. 1971). Audio
Phil knowingly induced Rouge to make the infringing
recordings, and also contributed by helping locate
recordings to use.
2. Abdallah would be liable. Cf. A&M Records v.
Abdallah, 948 F. Supp. 1449 (C.D. Cal. 1996) (preGrokster). The tapes arguably have substantial
noninfringing purposes, but that would not matter in a
case like this, in which Abdallah had ongoing

knowledge of the infringement and marketed his


goods to people for the purpose of infringement.
Under Grokster, he would be liable for contributory
infringement and not be able to use the protection of
Sony.
3. Google would not be liable for contributory
infringement. Unlike Grokster, it did not market its
services for infringement or depend on infringement
as the basis of its business. There is no showing that
Google had the necessary object of promoting its
use to infringe copyright, as shown by clear
expression or other affirmative steps taken to foster
infringement, which is the standard set by Grokster.
If a search engine was specially designed and
marketed to facilitate online infringement, there could
be a different result.
4. Here, there was no expression by F2F promoting
infringing activity, unlike in Grokster. The question
would be whether supplying a substitute for
Grokster's service, software that was used primarily
for infringement, as with Grokster, would be
sufficient to meet the standard set by the Grokster
court. In other words, whether actions alone would
be sufficient to constitute promotion, or whether
words are also required.
5. This example also calls for interpreting the Grokster
standard. The purpose of Freenet is not to promote
copyright infringement, rather more generally to
allow free sharing of information without the
knowledge of outsiders. If the developers take no
active steps to promote the use of Freenet for
copyright infringement, then there would seem to be
no liability under Grokster. By contrast, an
advertising-supported website that urged a user to
download movies using BitTorrent and provided
technical support was liable for inducement of
copyright infringement. Columbia Pictures Indus. v.

Gary Fung, 710 F.3d 1020 (9th Cir. 2013).


6. This example is a red herring as a reminder. There is
no need here to go into the analysis of contributory or
vicarious liability. Chocmatica is liable as a direct
infringer for making and distributing infringing
copies.
Chapter 19 Remedies
Statutory
damages and attorney's fees are available only if the
copyright was registered at the time of infringement (or
was registered no later than three months after first
publication, and infringement occurred after publication).
17 U.S.C. 412.

Examples
1. No harm, no foul. Isaiah, an art student, posts an
abstract design on his website. One day, he sees it on
the cover of Taylor's best-selling novel, Monopoly
Topology. At trial, witnesses for both sides agree that
the cover design did not affect sales of the novel.
Indeed, most buyers saw the cover only after buying
or ordering the book. A typical artist's commission
for such a cover would have been $1,000. Isaiah's
attorney argues that damages should be a mere ten
cents a copy. At 10 million copies sold, that would
amount to $1 million. Anything less, she argues,
would fail to discourage publishers from stealing.
What damages should the court award?
2. No better late than never. Maria makes copies of all
the photos made by Isabella, some 200 in all.
Isabella considers suing for copyright infringement.
She realizes that she will have little to show by way
of her actual damages or Maria's profits, but statutory
damages would run $750 to $30,000 per work. The

copyrights have not been registered, so she decides


to quickly register them to qualify for statutory
damages. Would that work?
3. Restitution. Evil Studio steals a screenplay, Shark
Gallery, written by Ian, and makes a big-budget
movie. The customary fee for such a screenplay
would be $5 million. Evil Studio bungles the making
and marketing of the movie and loses millions. When
Ian sues, Evil Studio gladly agrees to an injunction,
happy to take the stinker off the market. But, it evilly
argues, no damages may be awarded, because the
movie was a loser. Correct? Does it matter in this
case whether the copyright was registered at the time
of infringement?
4. How many works? Over a long career, Avigit's many
photographs appear in various publications and
exhibitions. Avigit retains the copyrights and
registers them all. He finally publishes his favorite
1,000 images in a single book. Standish, without
permission, copies dozens of them from the book for
use in a clothing catalog. The range of statutory
damages is $750 to $30,000 per work infringed (up
to $150,000 for willful infringement, down to $200
for an infringer that reasonably believed she was not
infringing, and down to zero for some such as library
employees). How many works were infringed here:
dozens of copyrights in photographs or one copyright
in a book of photographs?
5. Stretch. Polar Bear shoots whitewater kayaking
video and licenses it to Timex for promotion of
watches. Timex likes the footage so much that the
company keeps using it beyond the expiration of the
license to promote Expedition Watches. Polar Bear
seeks damages, arguing that it might otherwise have
sold $200,000 worth of a video, PaddleQuest. It was
unable to produce the video and market it, because
Timex did not forward funds for additional use of the

footage. In addition, Polar Bear argues that Timex


made indirect profits from using the footage because
it enhanced the value of the Expedition Watch brand,
even where it was not used in advertising. A jury
awards Polar Bear all of those damages. Should the
court sustain the award?

Explanations
1. The work was evidently unregistered at the time of
infringement, so statutory damages and attorney's fees
are not available. Isaiah is entitled to actual damages
and recovery of profits attributable to the
infringement. Proven actual damages appear to be no
more than $1,000, the commission that would have
been paid. No recoverable profits are shown,
because none of the book's profits are attributable to
the infringement. His argument for ten cents a copy is
really a request for punitive damagesbut the statute
makes no allowance for punitive damages, only for
compensation (actual damages) and restitution
(recovery of profits). The result would be different if
he could show more actual damages (damages to him
or the value of the work, or a higher lost licensing
fee).
2. Registration now will not lead to statutory damages
for Maria's past infringement. Statutory damages and
attorney's fees are only available if the copyright was
registered at the time of infringement (or was
registered no later than three months after first
publication, and infringement occurred after
publication). 17 U.S.C. 412. The works were
unregistered at the time of infringement. The threemonth
period for recently published works applies
only to infringement of published works. This
example shows that if the copyright owner wishes to
have statutory damages and attorney's fees available,
she must register in timely fashion.

3. A court would likely award Ian $5 million in


damages. The successful plaintiff is entitled to actual
damages and to defendant's profits attributable to the
infringement. Had the movie made profits, the court
would have had to determine which portion was
attributable to use of the screenplay (as opposed to
other factors, such as the contribution of the director,
actors, and marketers). Defendant had no profits here,
so there would be none to disgorge. But Ian is also
entitled to recover damages. A good way to show
damages is the fair market value of the infringing use.
The customary screenplay fee would be $5 million,
so the court would likely award that.
The damages award would not be affected if the
copyright was unregistered. Infringement gives a right
to actual damages and profits, whether the copyright
was timely registered or not. (Note that Ian will be
required to register as a precondition to bringing suit,
but that may be done after infringement.) If the
copyright was timely registered, the plaintiff may
elect to receive statutory damages instead of actual
damages and profits. Statutory damages would not be
available if Ian had not registeredbut the maximum
award of statutory damages is $150,000, even for
willful infringement (which there was here). Ian
would prefer actual damages of $5 million.
4. This example raises an unsettled question of
interpreting the statute. Standish would argue that he
infringed only one work: the book, which was a
compilation containing the various photographs. The
statute provides, For the purposes of this subsection,
all the parts of a compilation or derivative work
constitute one work. Standish would argue that the
various photographs were parts of the compilation,
so he only is liable for one award of statutory
damages.
Avigit would argue that he is not claiming

infringement in the compilation copyright. He does


not contend that Standish copied the selection,
arrangement, or coordination of the photographs.
Rather, he is suing for infringement in each of the
dozens of individual photographs. Some courts
would apply the test, whether the purported work has
an independent economic value and is, in itself,
viable. The various photographs would qualify as
separate works because they appeared separately in
publications and exhibitions. Under this approach,
Stan dish would be liable for a separate award of
statutory damages for each photograph.
5. The award was overturned for lack of a causal
connection. The theory that had the money arrived,
Polar Bear would have funded a successful campaign
to sell the video, was pie in the sky. More concrete
evidence is required. The infringer is also liable for
a portion of profits attributable to the infringement,
but the indirect profit theory was likewise too thin.
Rather, a basis for apportioning such profits must be
shown. See Polar Bear Productions v. Timex
Corporation, 384 F.3d 700 (9th Cir. 2004).

Example
1. Enjoin? The animated film Phlogiston contains a 30second scene that made considerable unauthorized
use of Fireworks, a painting by Sarah Jane. Sarah
Jane seeks actual damages, profits, and an injunction
against any further distribution or performance of the
film or any derivative works based on the film. The
film has been shown at a few previews but has not
yet been commercially released. The studio argues
that an injunction should not be awarded where only
30 seconds of a one-hour film infringes. Rather,
damages would be appropriate. Should Phlogiston
be shut down?

Explanation

1. A court would likely consider (1) the threat of


irreparable harm to the moving party, (2) the balance
of harm between this harm and the harm suffered by
the nonmoving party if the injunction is granted, and
(3) the public interest. The third factor, public
interest, may matter less here than with such works as
textbooks or medical journals. The issue would be
the balance of harm to the parties. Sarah Jane may be
harmed by widespread release of the infringing use
of her work. Damages would somewhat reduce the
harm to her. A complete injunction could be very
harmful to the studio if it meant that the film could not
be used at all. It would appear, however, that the
court could choose something in the middlean
injunction that the film could not be distributed or
performed until the 30-second infringing sequence
was removed or replaced with a noninfringing
version. The court would need more facts here (going
to potential damage to Sarah Jane's artistic reputation
and to the studio's situation). The example serves
simply to show that injunctive relief is a matter of
equity rather than mechanics and can be tailored.
Chapter 20
misappropriation tort survived under New
York law in only a narrow version, applying where:
1. A plaintiff generates or gathers information at a cost
2. The information is time sensitive
3. A defendant's use of the information constitutes freeriding
on the plaintiff's efforts
4. The defendant is in direct competition with a product
or service offered by the plaintiffs
5. The ability of other parties to free-ride on the efforts
of the plaintiff or others would so reduce the
incentive to produce the product or service that its
existence or quality would be substantially threatened

Examples
1. Database. Info LLC compiles white-page telephone
books. Info spends considerable resources in
gathering the names, addresses, and telephone
numbers of everyone in a town, arranging the
information alphabetically by name, and printing and
distributing the phone books. Info gives the books
away and makes money from selling advertisements
in the books. Data LLC, a competitor, buys copies of
the phone books from recipients. Data uses machines
to disassemble the books and scan the information at
much less cost than Info needed to compile the
information. Data publishes and sells its own phone
books. Is Data liable for misappropriation under the
NBA test?
2. The edge. Punter News is a news service for stock
market traders. Punter has dozens of sources and
long-standing relationships with many important
people in the finance world. Punter is often the first
news service to get wind of developments that will
affect stock prices. Punter charges a very high fee to
subscribers. In return, Punter sends news out to
subscribers as quickly as possible, 24 hours a day,
and makes special efforts to reach subscribers
wherever they are. The subscribers agree to use the
information for their own trading purposes but not to
share the information with others. One of Punter's
subscribers is Levon Investing. Punter learns that
Marta, an administrator at Levon, has used her access
to Punter's reports to trade for her own account over
the past several years. Marta has made many
thousands of dollars in profits from this activity.
Marta is aware that her use violates the terms on
which the information is provided to Levon. Her
conduct also violates her contract with Levon
because it is contrary to Levon's employee

regulations. Is Marta liable to Punter for the tort of


misappropriation under the NBA test?

Explanations
1. Data is not liable for misappropriation under the NBA
test. Most of the elements are met: Info gathered the
information at a cost, Data's use probably constitutes
free-riding because Data put little effort into getting
the information, and Data and Info are in direct
competition. But there is no showing that Data meets
the last element, that the ability of people to make
such use of the information would drastically reduce
the incentive to gather the information. And the
second element is clearly not met. The information is
not time sensitive; to the contrary, the information in a
phone book is intended to remain useful for a long
period of time. So not all of the necessary elements
are met here. The case illustrates the fact that NBA
leaves only a very narrow tort of misappropriation.
2. Marta is not liable to Punter for misappropriation.
One element is that the defendant be in direct
competition with a product or service offered by the
plaintiff. But Marta does not offer a product or
service that competes with Punter. She is simply
buying and selling stock, rather than selling products
or services. Marta is breaching her contract with
Levon and knows her use violates the terms on which
the information is provided. But the misappropriation
tort does not depend solely on the wrongfulness of
the defendant's conduct. Rather, as formulated by
NBA, it requires meeting several very specific
limitations. Note that some earlier cases may have
applied misappropriation here, reasoning that Marta
used valuable commercial information in an unethical
manner. But the trend, exemplified by NBA, is away
from such a broad formulation.

Examples

The states of Broadonia and Narrovania have each


recently enacted statutes creating a right of publicity. The
Broadonia statute reads:
Every person, living or dead, shall have the exclusive right to any
commercial exploitation of her name, likeness, voice, signature, or any
other symbol, representation or combination thereof that could identify
her. Such right shall have the attributes of personal property and shall
endure for the life of the individual plus 50 years. Anyone who infringes
this right shall be liable for damages and attorney's fees. Mere references
to such person for literary, cultural, news reporting, critical, or
entertainment purposes shall not fall within such right, where such
reference does not have a commercial purpose.

The Narrovania statute reads:


Every well-known person shall have the exclusive
right to use her name or face, where the sole purpose of
such use is to advertise goods or services. Such right shall
not be assignable or survive the owner of the right.
1. Bandwagon. Eagle Iron wins several professional
golf tournaments in a row and becomes nationally
famous. Green Beer runs television advertisements
that consist of close-ups of Eagle's face as she plays
while a voice in the background extols the relaxing
powers of Green Beer ale. Eagle has not given
permission for the use of her image. Is Green Beer
liable under the law of Broadonia? Of Narrovania?
Would the result be different if rather than a famous
golfer, Green Beer had just used close-ups of the face
of an obscure golf fan?
2. Shape. Eagle continues to have great success. Every
time she wins a tournament, she raises her putter over
her head in a distinctive celebratory gesture. Instant
Products begins to sell a T-shirt that bears a simple
photo of Eagle making her well-known gesture. The
photo quality is too poor to make the face
recognizable, but most viewers of the photo instantly
recognize Eagle as the only person who makes such a
gesture standing on a golf green. Is Instant Products
liable under the law of Broadonia? Of Narrovania?
Would the result be different if the photo were simply

a stock photo of Eagle's face?


3. Truer than life. Widget is a character in Otter's new
novel, Look-In. To get the book published, Otter sold
the copyright to Bond for several thousand dollars.
Widget, a college student struggling to find her
identity, strikes a chord with students nationwide.
Soon Agent authorizes an animated film to be made
based on Otter's book. After the film is released,
Agent sells a license to Carrie's Phone Cards to use
the face of Widget, copied from the film, in phone
card advertising. Otter, aghast at the
commercialization of Widget, files an action to enjoin
the advertising. Otter acknowledges that he has sold
the copyright to the book but claims that, as the
creator of Widget, he owns Widget's rights to
publicity. Would Otter succeed under the Broadonia
statute? The Narrovania statute?

Explanations

1. Green Beer is liable under both the Broadonia and


Narrovania statutes. Eagle Iron's face is used
prominently in television advertisements while beer
is praised in the background. Under the Broadonia
statute, that constitutes commercial exploitation of
her likeness. Under the Narrovania statute, that
constitutes the requisite use of her face, where the
sole purpose is to advertise goods or services.
If an obscure subject had been chosen, the result
would be different under the Narrovania statute,
which only applies to well-known persons. But the
result would be the same under the Broadonia statute.
The use of the individual's face constitutes
commercial exploitation of her likeness when the
entire commercial is made of close-ups of the
individual's face. The Broadonia statute does not
require that the public be able to actually identify the
person whose likeness is used.

2. Instant Products may be liable under the Broadonia


statute but is not under the Narrovania statute. The
Narrovania statute does not apply because it applies
only to uses of the subject's name or face. Here, the
T-shirt does not use Eagle's name or face.
The Broadonia statute requires commercial
exploitation of a representation that would identify
Eagle. The T-shirt does include the necessary
identifying representation because the figure in the
photo is readily identifiable as Eagle. The issue is
whether using the representation on T-shirts qualifies
as commercial exploitation of the identifying
representation. Putting her figure on T-shirts and
selling them may constitute the necessary commercial
exploitation, but a court might reason that the statute
is not intended to reach every commercial activity
that invokes an individual. The statute does contain
an exception for mere references for various
purposes provided there is no commercial purpose.
The making and selling of T-shirts seems to have a
commercial purpose and also does not fit clearly into
one of the protected purposes. But commercial
exploitation might be read to include only uses of
the subject's identity in advertising or similar uses.
In addition, the use of the image on T-shirts is an
expressive use and not commercial speech, which
receives limited First Amendment protection. So,
although the case law is as yet unsettled, it may be
unconstitutional to grant exclusive rights that would
so restrict expression concerning individuals.
If the T-shirt used a stock photo of Eagle's face, the
analysis would be similar under the Broadonia
statute, although the argument for commercial
exploitation might be a little stronger. Under the
Narrovania statute, the issue would be closer. The
photo of the face (unlike the photo of the gesturing
figure) falls within the protected uses of name or

face. But the Narrovania statute is limited to cases in


which the sole purpose is to advertise goods or
services. Here, the image appears on the goods
themselves. The image serves as the product itself
although it might also be used to advertise the
product wherever the T-shirts are exhibited for sale
so the sole purpose is not advertising, and the use
would not fall inside the Narrovania statute.
3. Otter would not succeed under either statute. The
question is whether a fictional person has a right of
publicity. The Broadonia statute grants rights to
[e]very person, living or dead. The Narrovania
statute grants rights to [e]very well-known person
and provides also that the right does not survive the
subject. Both statutes appear to apply only to actual
human beings, as opposed to fictional persons (such
as characters in works of fiction) or to strictly legal
persons (such as corporations). So there is no right to
publicity with respect to Widget.
1. Explicit preemption: A federal statute may expressly
preempt state law in the relevant field, completely or
partly.
2. Field preemption: If federal law occupies the entire
field, there is no room for application of state law.
3. Conflict preemption: State law is preempted if (a) it
would be impossible to comply with both state and
federal law, or (b) state law stands in the way of
accomplishment of the objectives of the federal law.

Examples
1. Author's rights. A new Broadonia statute provides
that any poet has the exclusive right to sell copies of
her poems or to read them in public once she has
written the poem down or otherwise preserved it.
Shakes, a poet, seeks to enforce his rights under the

statute against a literary magazine that printed one of


his poems without permission. The magazine
contends that the federal statute preempts the
Broadonia statute. Shakes responds that the
Broadonia statute is not preempted because it is
entirely consistent with the federal statute. Both grant
rights to the authors of poems. Is the Broadonia
statute preempted? Would it make a difference if the
Broadonia statute applied only to poems that had not
been written down or otherwise preserved in a stable
form by the poet (that is, to poems saved only in the
poet's mind)?
2. Unauthorized biography. Broadonia passes a statute
granting each person the exclusive right to make or
sell any book based on the person's life. Anyone
making or selling a book about someone without
permission is liable for a percentage of the receipts
from the work. The statute expressly provides that it
does not apply to copying of expression that is
protected by copyright, rather only to use of facts
involving the person. Does federal law preempt the
statute?
3. Broken promise. Zosoft sells widely used software
for processing digital images. To use the software,
the user must click on yes to the click-wrap
agreement. One clause of the agreement provides that
the user agrees not to copy any aspect of Zosoft's
software into other software. Myrtle buys a copy of
the software and greatly admires how well it works.
Myrtle then develops her own digital image software
for the commercial market, copying several
functional aspects of Zosoft's software. Zosoft sues
for breach of contract. Myrtle contends that federal
law preempts enforcement of the contract. Is Zosoft's
cause of action preempted?
4. Characters are people too. Broadonia expands the
scope of its right to publicity statute by granting a

right of publicity to fictional characters in books,


films, or other works. The Broadonia statute
provides that there shall be a right of publicity for
any fictional character encompassing the exclusive
right to make or distribute any work that contains the
character. Such right belongs to the author of the
work in which the fictional character first appears.
Years ago, Downpike sold the copy right to her first
novel, which features the hardboiled detective Annie
Asphalt. The buyer of the copyright has just
published a sequel to the novel and released a movie
based on the novel, both featuring Annie Asphalt.
Does federal law preempt Downpike's cause of
action under the Broadonia statute?
5. Preemption of misappropriation?
Theflyonthewall.com collected investment
recommendations made by major financial
institutions and published the information before the
financial institutions themselves made them public.
Sued for state law misappropriation,
Theflyontheall.com argued that the federal copyright
statute preempted any state law liability. Does it?
6. Zombie lawsuit? Montz spoke with some TV
producers to sell his idea for a television show that
would follow a team of paranormal investigators
conducting field investigations. They did not hire
him, but later on, they produced Ghost Hunters,
which Montz deemed to be an incarnation of his idea.
Under California law, when a writer discloses a
script idea to a producer, there may be an implied
contract that the writer will be compensated if the
idea is used. The producers argued that federal law
preempted a suit based simply on copying ideas.
Federal copyright law permits copying of ideas, so
state law cannot forbid it. Can Montz proceed?

Explanations

1. The Broadonia statute is preempted under section


301 of the Copyright Act. It is unnecessary to
consider conflict preemption or field preemption.
The Copyright Act expressly preempts certain state
rights such as this Broadonia statute. Under section
301, the Copyright Act preempts any state right that is
a. equivalent to any of the section 106 exclusive
rights,
b. a work of authorship fixed in a tangible medium
of expression, and
c. comes within the scope of copyright as
specified by sections 102 and 103.
The rights under the Broadonia statute meet all three
requirements. The rights are equivalent to the
section 106 rights to distribute the work to the
public and perform the work publicly. The rights are
in a fixed work of authorship, having been written
down or otherwise preserved. Poetry comes well
within the scope of copyright.
The Broadonia statute would not be preempted if
it applied only to poetry that the author had not
preserved in tangible form. As listed above, section
301 preemption applies only to works that are fixed
in a tangible medium of expression. Field preemption
and conflict preemption would also be inapplicable
to unfixed works. Rather, states remain generally free
to regulate copyright in unfixed works (a narrow
category of works).
2. The Broadonia statute is probably preempted. It is
not clear that section 301 preemption applies. The
Broadonia statute does grant a right equivalent to
section 106 rights (a right to make copies or
distribute works to the public) that comes within the
scope of copyright, but the right arguably is not based
on a work of authorship that is fixed in tangible form;
it is based only on intangible facts relating to the life
of a person. One might conclude, however, that the

statute gives the subject a copyright once the ideas


have been fixed in the form of a book written by
someone else. In any case, the statute surely is
invalid under conflict preemption because it grants
exclusive rights to make and distribute works using
certain facts, exactly the sort of material that the
Copyright Act seeks to keep in the public domain. It
does not have any extra elements such as deception
and so is equivalent to granting a copyright in facts.
3. This case gives an example of an area that is
presently unsettled, the extent to which contract law
may be used to obtain rights that copyright law does
not grant. Contracts frequently protect information
that is not protectable by copyright (such as facts,
ideas, or functional matter) or reduce user rights
granted by copyright (such as fair use or first sale
rights). Courts generally have upheld such
restrictions. See, e.g., Bowers v. Baystate Techs, 302
F.3d 1334, 1343 (Fed. Cir. 2002) (holding no
preemption of shrinkwrap contract that prohibited
any reverse engineering of the software covered by
the agreement); Davidson & Assocs. v. Jung, 422
F.3d 630 (8th Cir. 2005) (same). But the issue is far
from settled.
When only a few parties are subject to the contract,
such private agreements seem to have little conflict
with copyright lawand indeed often further
copyright law by enabling efficient licensing of
copyrighted works. As both legal and technological
licensing techniques continue to refine control over
information, however, there may be more cases in
which (as in patent law) courts hold that contractual
restrictions are unenforceable in light of federal
copyright law policy (or other federal law, such as
antitrust). So there is no clear answer to this case.
Courts generally have upheld contractual restrictions
that exceed the exclusive rights of copyright, but

where the lines may be drawn awaits further


development of the case law. A court could hold that
enforcement of the agreement not to copy would
conflict with the federal policies in the Copyright Act
by effectively giving exclusive rights in
noncopyrightable elements and is therefore
preempted.
4. The federal copyright statute would preempt
Downpike's state law cause of action. The Broadonia
statute gives the author of a fictional work the
exclusive right to make or distribute any work that
contains the character. Such an exclusive right is
equivalent to some of the exclusive rights of federal
copyright law (the rights to make copies, adapt the
work, and distribute copies). It would be preempted
under section 301 of the Copyright Act.
5. The court held that federal copyright law would
preempt liability for simply copying information in
this case, following the NBA v. Motorola case
discussed earlier with respect to the tort of
misappropriation. Barclays Capital Inc. v.
Theflyonthewall.com Inc., 99 U.S.P.Q.2D (BNA)
1247 (2d Cir. 2011). Federal copyright law allows
copying of facts, nonoriginal expression, and other
noncopyrightable elements. Theflyonthewall .com
addresses the ghostly presence of International
News Service v. Associated Press, 248 U.S. 215
(1918), under which misappropriation of hot news
might supply a cause of action. The Second Circuit
held that hot news might still survive where it was
sufficiently different from the federal copyright law,
but the tort would be very narrow. It would only
apply where free-riding allowed the defendant to
produce a product in direct competition for lower
cost. But the plaintiffs here were financial
institutions, making the recommendations as part of a
broader business providing financial services. They

were not in direct competition with the seller of


investment tips; nor would their entire business be at
risk if the recommendations would be prematurely
made public. Under Theflyonthewall.com, it will be
difficult to impose liability simply for copying
information (as opposed to using improper means to
obtain information, which will still be subject
liability under such theories as trade secret
misappropriation or breach of contractual promises
not to disclose information).
6. Copyright did not preempt the state law claim
because it had as an added element: an agreement to
pay for use of the disclosed ideas. Montz v. Pilgrim
Films & Television Inc., 98 U.S.P.Q.2D (BNA) 1569
(9th Cir. 2011) (en banc).